EP 2 256 579 B1 relates to a solar inverter and control method.
Brief outline of the procedure
Claims 1 and 2 as granted contravened Art 123(2). AR1+2+4-25 idem-AR3 had the same defect. Art 3 contravened Art 123(3). The patent was revoked by the OD.
The proprietor appealed and the board confirmed the revocation.
The case is interesting in view of the board’s position with respect of G 1/24 and Art 123(2).
The proprietor’s point of view
The proprietor argued essentially that after consultation of the description and the drawings as ordered by G 1/24, there was only one possible interpretation of claim 1 as granted.
The proprietor pointed to Figure 2 and to paragraphs [0010] to [0012] of the application, which explained the operation of the circuit in the figure. The purpose of the circuit shown in Figure 2 was to control the voltage of the PV module 12 so that it can be fed into the grid.
The proprietor argued that the skilled person would have understood that the terms “first bypass circuit” and “second bypass circuit” were referring to two branches of the same bypass circuit, as described in the description and in Figure 2.
It was evident that both of these circuits were necessary for the boost converter to be bypassed, so when one of them was active, the other one had to be active, as well.
Claim 1 interpreted in that way did not contain any subject-matter extending beyond the originally filed content of the application.
The opponent’s point of view
The opponent argued that the claims should not be limited only to what could be derived from the description.
Claim 1 comprised embodiments which were technically plausible and had no basis in the originally filed application.
The board’s decision
The board reminded of the “gold standard”, cf. G2/10, Reasons 4.3.
Despite the mention of the specific context of assessing patentability of an invention under Art 52 to 57, the present board considered that the description and drawings should also be consulted to interpret the claims when compliance with other requirements of the EPC is being assessed.
Firstly, it does not seem logical to forbid the skilled reader to consult the description and the drawings when interpreting claims in any other context than assessing patentability under Art 52 to 57.
Secondly and more importantly, the claimed subject-matter should be interpreted in a uniform and consistent manner. It cannot be that claims are interpreted differently when assessing patentability under Art 52 to 57 on one hand, and when assessing compliance with any of the remaining requirements of the EPC on the other hand. The board referred to e.g. T 177/22, Catchword, or T 1473/19, Reasons 3.12 to 3.13.
At the same time, the board noted that neither the order nor the reasoning of G 1/24 contain any indications of any possible result of such a consultation of the description and the drawings or any possible impact it might have on the interpretation of the claims.
In particular, there is no basis in G1/24 to conclude that a claim must be interpreted in a more limited manner based on features found in the embodiments of the description.
In other words, “consulting” the description and the drawings should not result in reading limitations into a claim which are not included in or cannot be derived from the claim wording.
The very essence of assessing whether the subject-matter of an amended claim extends beyond the content of the originally filed application consists in determining whether it possibly comprises embodiments that are not derivable from the description, the drawings and the claims of the application as originally filed.
The proprietor’s argument leads to a tautology: if an amended claim is interpreted so that its subject-matter is limited to what can be derived from the application as originally filed, the comparison of this claim to the content of the application as originally filed would inevitably lead to the conclusion that the claimed subject-matter does not extend beyond the content of the application as originally filed. In such a case both Art 123(2) and 100(c) would be deprived of any meaning or purpose.
Comments
It is not the first time that boards have applied G 1/24 when it comes to added matter.
In T 0981/23, penultimate § in Reasons 2.2.3, commented in the present blog, in T 0873/23, Reasons 1.6.1, commented in the present blog, and in T 1164/23, Reasons 1.5.4, commented in the present blog, as well as in T 0405/24, Reasons 1.2.3, also commented in the present blog, different boards have already ascertained that G 1/24 applies also to Art 123(2).
In T 0981/23, the board considered expressly that G 1/24 is not only applicable for the question of “patentability of an invention under Art 52 to 57″ but also for the issue of Art 123(2). The board referred to T 873/23, Reasons 1.6.1 and T 2048/22, Reasons 1.2.
It cannot be that, when, on the basis of the description, a different interpretation of the matter for which protection is sought, might be possible, the applicant/proprietor is allowed to choose the interpretation which he considers not infringing Art 123(2). This would render any objection of added matter moot.
The present decision confirms the existing case law relating to G 1/24 and consulting the description.
All decisions, but T 439/22 (gathered sheet), have held that, if the applicant proprietor wants the interpretation of the matted for which protection is sought present in the description, then the claim has to be amended accordingly. G 1/24 has certainly not recommended to adopt a holistic approach as done in T 439/22, see also my comments in the present blog.
Possible referral over G 1/24 and added matter
In view of the present decision, I do not give much about the admissibility of the referral envisaged in case EP 3 587 104–T 0873/24 on Art 123(2) and G 1/24, commented in the present blog. The aim of this referral is manifestly to specify what has to be understood under “consulting” the description, and/or whether and/or how G 1/24 also applies to Art 123(2).
The EBA has carefully resisted giving a precise definition of what is meant by “consulting”. If the EBA had wanted the holistic approach adopted in T 439/22 to be come the rule, it would have said so.
The answer whether G 1/24 applies to Art 123(2) has been given in a series of board’s decisions which are abundantly clear. A referral does thus not appear useful.
In a communication dated 23.04.2026, the board announced a decision for the 03.06.2026.
We will then know whether a referral is on the way or not. Betting is now open.
Comments
6 replies on “T 2488/22-G 1/24 and added matter”
Daniel, I wonder what you think of the sentence in the Decision that starts off “The very essence….”. Do you agree with it? Where is the authority for the Rapporteur to write this sentence? Or is it self-evident that it is the “essence” of the “Gold Standard”. Not to me it isn’t.
I shall have to think about it for a bit longer but my first reaction is that this sentence is not right, not necessary, and not helpful. I wonder what you make of it, and what your initial reaction was, upoin first encounter with it when you first read the Decision.
Max Drei,
At the risk of disappointing you, I find nothing bad in this sentence and I cannot but agree with it.
First, I would like to remind you that the sentence is not that of the rapporteur alone. The sentence is part of a collegial decision of all the members of the board. Attacking the rapporteur alone is thus not correct.
Assessing whether the subject-matter of an amended claim extends beyond the content of the originally filed application, consists in determining whether it possibly comprises features that are not derivable directly and unambiguously from the description, the drawings and the claims of the application as originally filed.
May be you have a different perception of the word “essence”, but stating that the “essence” of determining whether there is added matter is by comparison of any new statement with the original disclosure is, in my eyes, totally justified.
To me the sentence has to be seen in the whole context of § [0021]. The aim of § [0021] is to make clear that the proprietor cannot rely on a limited definition of the matter for which protection in sought contained in the description to be read in the claim, when this definition in the description is at odds with the definition of the matter for which protection is sought directly and unambiguously derivable from the plain wording of the claim.
As the board implied, at this rate, we can forget the gold standard of G 2/10. When the claim defines more than what has been disclosed and defined in the original disclosure we are in the presence, by essence, of added matter.
To me, the whole § [0021] is a direct and unambiguous rebuttal of the position adopted by the board in T 439/22 (gathered sheet). In T 439/22, the board adopted a holistic approach and stated that a limiting or a broadening definition found in the description has to be read into the claim.
G 1/24 has not said this, and all boards applying G 1/24 do not agree with this position. If the limiting or broadening definition found in the description has to be taken into account, then the claim has to be amended accordingly.
This is also why I allowed myself to comment on the admissibility of a possible referral in case EP 3 587 104–T 0873/24. By the way, the same LQM acted in T 439/22 and in T 873/24. This is a fact and by no means a judgement of value.
Reading again your answer (thank you) to my first comment, Daniel, I see that we are in danger of ploughing ground which we have already thoroughly tilled. I am thinking of the distinction in my mind between what is meant by “defined” and what is meant by “disclosed”.
Safest is always, I would say to the TBA here, is to cling to the exact words of the EPC, in context, and keep to a minimum the temptation to paraphrase them. Why was it necessary to decree, here, what is the “essence” of Art 123(2) (or for that matter the by now thoroughly well-understood “Gold Standard”).
Daniel my problem is not with the meaning of essence. It is more a desire to keep pure the difference between Art 123-2 and 123-3. Whether a claim covers more embodiments is language fitting better to 123-3 than 2. Of course, a claim can also be a disclosure but only what is directly and unambiguously derivable is disclosed. Hence, when a claim is amended during opposition we need to be careful when analyzing whether it offends 123-2 or 3, or both, and in so doing, select our words with care
Max Drei,
I do agree with you that, when a claim is amended during opposition we need to be careful when analysing whether it offends 123-2 or 3, or both.
On the other hand, the present paraphrase of Art 123(2), in essence, is, in my opinion, harmless and does not alter in any way the golden standard.
Art 123(2) is clear: new technical information = added matter. It applies to the description, the drawings and the claims.
Art 123(3)= expanding the scope of protection = having less features or limitations in a claim. Some amendments can be in accordance with Art 123(2) but contravene Art 123(3), e.g. originally disclosed range 5-10, claimed range 5-8, new range in opposition 5-9.
The same applies with amendments to the description. To me it is mainly a question of Art 123(2), much less Art 123(3). This is why I do not follow T 439/22 when it say that deletion of § 35 was a problem of Art 123(3). To me it is a problem of Art 123(2) in the description, not in the claim.
This is why I do not agree with deletion of embodiments not any longer covered by the claims. However,they cannot be left in the description as representing the definition of the matter for which protection is sought found in the amended claims.
What jurisdictions acting post-grant or post-opposition do with the B publication is outside the reach of the EPO and its boards. It does however not mean that the EPO can sit back and do nothing. It has a duty of clarification for third parties.
In the end, it all comes back to Art 84, eh Daniel. Never mind though. Clarity is very important. We are looking at you now, EBA. Not long to wait now, I hope.