CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 367/20 – Art 69 and added subject-matter

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The patent related to a cold/hot water supply apparatus

Brief outline of the case

The patent was revoked by the OD and the proprietor appealed.

The OD found that Art 100(c) prejudiced the maintenance of the patent as granted, that the subject-matter of claim 1 of any of AR 1 to 6 did not comply with Art 123(2), and that claim 1 of AR 1a and 1b did not comply with Art 123(3).

The board found that there was no added matter and remitted the case to the OD for further prosecution

The case is interesting in that it links Art 69 with added subject-matter.

The contentious feature in the claim as granted

“a first switching pipe (62) which is connected to the fluid flows in parallel with the third heat exchanger (53)”

The two possible interpretations

  • (a) the fluid flows are in parallel with the third heat exchanger, which would add subject-matter and would lead to an inescapable trap under Art 123(2 and 3)
  • (b) the first switching pipe is in parallel with the third heat exchanger, which is undisputedly disclosed in the application as filed

The opponent’s point of view

Assessing added subject-matter required taking into account what was clearly and unambiguously disclosed in the patent. Considerations about what was implicitly disclosed should not be confused with considerations about what was obvious as the latter was only relevant for assessing inventive step.

The proprietor’s point of view

Examining the compliance of claim 1 with the requirements governing added subject-matter required first determining the subject-matter added by an amendment before examining whether there were embodiments not encompassed by the original disclosure.

The board’s decision

The parties submitted two alternative interpretations of a specific feature

  • One leading to added matter
  • The other not leading to added matter

The board held that the wording of claim 1 as granted was arguably unclear.

The board further held that a claim feature must not be interpreted in isolation but in the context of the whole document it forms part of. The context to be considered for the interpretation of a feature in a claim does therefore not only include the other features in that claim and other claims but also the description and the drawings.

The general principle that the claims of a patent, being a part of a document as a whole, need to be construed in their context was recognised early in the case law and has also been understood to underlie Art 69. The board quoted T 556/02, Reasons 5.3, fourth paragraph and, more recently, T 3097/19, Reasons 29.2.

The board added that claims must be interpreted through the eyes of the person skilled in the art, who should try with synthetical propensity to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent. If the claims and description are at odds, the discrepancy has to be resolved.

The claims as granted must be interpreted in the context of the whole document they form part of, i.e. the whole disclosure of the patent as granted. Accordingly, it is the description and the drawings of the patent as granted which must be used for the interpretation of the claims as granted. The board referred to T 450/20, Reasons 2.16; also commented in this blog. The board also referred to the “description and drawings” and the “European patent” in the first sentence of Art 1 of the Protocol on the Interpretation of Art 69.

Moreover, if – as in the present case – an amended description was submitted for the set of claims which was then granted, only the description of the patent is part of the text of the “European patent” which may be examined pursuant to Art 113(2).

In the case at hand, interpretation (a) and interpretation (b) of claim 1 as granted result in different claimed subject-matter and are mutually exclusive in that claim 1 either requires the first switching pipe or, alternatively, the fluid flows to be “in parallel with the third heat exchanger”.

Contrary to what was indicated by the opponent, it cannot be required of the patentee that the claimed subject-matter according to either of these mutually exclusive interpretations be disclosed in the application as filed.

Only the subject-matter which is actually claimed – as opposed to subject-matter which is merely hypothetically claimed – must be disclosed in the application as filed. In this situation, the deciding body must not adopt two mutually exclusive claim interpretations simultaneously and must – if decisive for the outcome of the case – not leave the interpretation in that regard open either.

Rather, the deciding body must consider which of the two claim interpretations is correct. This interpretation defines the claimed subject-matter which must be disclosed in the application as filed.


In so far as, like in the present case, the granted claim was unclear, recourse to the description under Art 69 can be justified.

When it comes to Art 123(2), be it in a claim or in the description, what in the end matters is what can be found in the original disclosure, i.e. description/drawings and claims, insofar as the latter have been originally filed.

If there is a need to interpret the granted claim, it is the description of the patent which has to be taken into account. If the description has been amended at grant in order to arrive at a certain interpretation of the granted claim, then not only the granted claim, but also the granted description has a problem under Art 123(2).

The subject-matter which is actually claimed – as opposed to subject-matter which is merely hypothetically claimed – must be disclosed in the application as filed. Artificial examples or hypothetical embodiments have nothing to do with added subject-matter, cf. T 1344/10 or T 2537/10.  

In T 450/20, the board suggested a systematic recourse to the description under Art 69, that is even if the claim is clear. This goes somehow too far, although it is standard practice at the German Federal Court (BGH).

In the present decision when, the proprietor and the board used the concept of what is “encompassed” by the claims when dealing with added-matter. The same concept of “encompassed” has been used in T 749/17, when dealing with Art 83.

Different interpretations of “encompassed”

It should be carefully distinguished between what is “encompassed” by the original disclosure and what is “directly and unambiguously derivable” from the original disclosure, even taking into account the common general knowledge of the skilled person.  Equivalents can be “encompassed” in the scope of the claims under Art 69 and the Protocol, but it cannot be said that those are directly and unambiguously derivable from the original disclosure.

By wanting to avoid at any rate to use the word “plausibility” in G 2/21, it can be argued that by using the term “encompassed” the EBA has encouraged the use of “encompassed” in other areas than assessing IS, for instance when it comes to added subject-matter.

After all, whether the claim is clear or not, the responsibility for the wording of the claim lies with the applicant/proprietor under Art 113(2). If there is a contradiction between a claim which is clear as such and the description as filed, it is for him to bear the consequences.

Importance of the clarity of the claims at grant

In view of G 3/14 it is important that at grant clarity of the claims is correctly assessed.

The present case shows the problems which can be created by an unclear claim. In opposition, it can end up in a mess, when the independent claim as such, or in association of with a dependent claim becomes unclear. Any combination of granted claims cannot be dealt with under clarity.

Different case law on the application of Art 69 in procedures before the EPO

 When it comes to the application of Art 69 in procedures before the EPO, we are clearly in presence of different, not to say diverging lines of case law.

No recourse to the description in order to interpret the claims is to be found in T 175/98, T 515/19, T 2370/16, T 1778/17, T 1583/17, T 21/16, T 1853/19, T 19/18 or T 1989/18.

Systematic interpretation of the claims in the light of the description under Art 69 is to be found in T 16/87, T 416/87, T 684/95, T 587/95, T 942/96, T 275/10, T 1473/19 or T 450/20.

Recourse to the description only in case of ambiguity, cf. T 481/95, T 169/20.

Use of Art 69 only in opposition when assessing Art 123(3), cf. T 1271/05, T 131/15 or T 42/22.

Use of Art 69 only when assessing IS, cf. T 274/94.

It appears thus important for the EBA to clarify the matter of application of Art 69 in procedures before the EPO. However, a systematic recourse to Art 69 in all procedures may weaken the very clear case law of the EBA on the duality novelty/ added matter, especially if the concept of “encompassed” is used.

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