Added Subject-Matter in Amending Claims with Pressure-Sensitive Adhesive Feature

Introduction

The European Patent Office (EPO) Technical Board of Appeal recently issued decision T 1084/22, which revolves around the key issue of added subject-matter under Article 123(2) EPC. The decision confirms the revocation of European Patent No. 2439372, rejecting the appeal by the patentee, Quanex IG Systems, Inc. The Board upheld the Opposition Division's finding that the patent's claims, as amended, introduced subject-matter that extended beyond the content of the original application, specifically focusing on the inclusion of a "pressure-sensitive adhesive."

Summary of the Invention

The patent in question relates to a method for forming an insulating glazing unit. This method involves the steps of providing a spacer body with adhesive on both sides, removing it from a storage container, applying a sealant, and then affixing glass sheets on either side of the sealant-laden spacer body using the adhesive. The key aspect of the patent as granted was the inclusion of a "pressure-sensitive adhesive" in the claims, which became the focal point of the opposition and subsequent appeal.

Summary of the Board of Appeal Decision

Arguments by the Opponent (LISEC Austria GmbH):The opponent argued that the amendment to claim 1, specifically the inclusion of "pressure-sensitive adhesive," constituted added subject-matter that extended beyond the content of the original application. They contended that the original application did not explicitly or implicitly disclose the use of pressure-sensitive adhesive, and that the amendment introduced new information not directly and unambiguously derivable from the original application.

Arguments by the Patentee (Quanex IG Systems, Inc.):The patentee countered that the concept of pressure-sensitive adhesive was implicitly disclosed in the original application. They argued that the manufacturing process and the nature of the adhesive described in the application, combined with references to prior art (such as US 4,831,799), suggested the use of pressure-sensitive adhesive. They maintained that the amendment did not add new subject-matter but merely clarified what was already disclosed.

Board’s Decision:The Board rejected the patentee’s arguments, affirming that the feature of a "pressure-sensitive adhesive" was neither explicitly nor implicitly disclosed in the original application. The Board referenced established case law (e.g., T 0689/90) and the "gold standard" for assessing added subject-matter, which requires that any amendment must be directly and unambiguously derivable from the original application. The Board found that the reference to prior art (HBP8) in the original application did not sufficiently support the inclusion of the pressure-sensitive adhesive feature. Consequently, the Board upheld the opposition and dismissed the appeal, concluding that the patent, as amended, violated Article 123(2) EPC.

Conclusion

The decision T 1084/22 reinforces the stringent requirements for amendments under Article 123(2) EPC. Patent applicants must ensure that any features introduced during prosecution are clearly supported by the original disclosure. The case highlights the importance of maintaining a clear and unambiguous link between the original application content and any amendments made to claims. This decision serves as a cautionary tale for patentees to avoid the pitfalls of added subject-matter that could jeopardize the validity of their patents.

Lessons Learned

The decision in T 1084/22 provides several key takeaways for practitioners, particularly concerning the handling of amendments during patent prosecution and opposition proceedings.

1. Strict Adherence to Article 123(2) EPC:The decision underscores the importance of ensuring that any amendments made to a patent application are directly and unambiguously supported by the original disclosure. The "gold standard" for assessing compliance with Article 123(2) EPC is stringent, requiring that any new feature introduced into the claims must be clearly derivable from the application as filed. Patent applicants should be cautious when incorporating additional features, especially those derived from references to prior art or other external documents.
2. Importance of Original Disclosure:The case illustrates that implicit disclosures are not sufficient to support amendments. Even if an amendment seems logical or consistent with the overall teaching of the patent, it will be deemed unacceptable if it cannot be directly and unambiguously traced back to the original application. This highlights the need for a thorough and careful drafting of the initial application to anticipate possible claim amendments.
3. Challenges of Incorporating External Features:The decision also highlights the difficulties in incorporating features from external documents, such as prior art references, into the claims of a patent. The Board emphasized that such features can only be included if they are clearly and unequivocally disclosed in the context of the invention as originally filed. Practitioners should be wary of attempting to incorporate isolated features from external documents unless they are fully integrated into the original disclosure.
4. Strategic Considerations in Opposition and Appeal:For opponents, this decision serves as a reminder of the effectiveness of challenging patents on the grounds of added subject-matter, especially when amendments are based on tenuous connections to the original disclosure. For patentees, it reinforces the need to carefully assess the risks of amendments during prosecution and consider the potential vulnerabilities that such amendments might introduce during opposition or appeal proceedings.

Overall, this decision is a clear example of the EPO's rigorous approach to maintaining the integrity of patent disclosures and ensuring that the scope of protection sought by a patent does not extend beyond what was originally filed. Patentees and their representatives must exercise great caution in making amendments, ensuring that every change is well-supported and justifiable based on the original application.

Contact

If you have any questions concerning intellectual property issuesor need assistance with patent applications, oppositions, or appeals, please do not hesitate to contact us at Novitech IP. Our team of experienced professionals is here to provide you with expert guidance and support. Reach out to us today to discuss how we can help protect your innovations and navigate the complexities of IP law.

To stay informed about the latest reviewsand updates in IP law, subscribe to our blog. Join our community and receive notifications whenever we publish new reviews and insights on important case law and developments in the field of intellectual property.

LegalDisclaimer
The information provided in this blog post is for generalinformational purposes only and does not constitute legal advice. The summary and analysis of the EPO case are based on publicly available information and are intended to offer insights into the decision and its implications. This content should not be used as a substitute for rofessional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.