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The test for added subject matter

7.56 In FE Global Electronics Pte Ltd and others v Trek Technology (Singapore) Pte Ltd [2006] 1 SLR 874 at [24], Martek Biosciences Corp v Cargill International Trading  Pte Ltd [2011] 4 SLR 429 at [81], and Main-Line Corporate Holdings Ltd v DBS Bank Ltd [2012] 4 SLR 147 at [73], the Singapore Courts have followed the test set down in the UK case Bonzel and Schneider (Europe) AG v Intervention Ltd [1991] RPC 553. The Court in Novartis AG and another v Ranbaxy (Malaysia) Sdn Bhd [2012] SGHC 253 at [8] followed a further elaboration of this test as provided in European Central Bank v Document Security Systems Incorporated [2007] EWHC 600 at [97]-[102].

7.57 The Court in Bonzel set down that in order to determine whether an amendment to the description had the result that a patent as granted disclosed matter which extended beyond that disclosed in the application a three-step test is applied —

(1) to ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application;

(2) to do the same in respect of the patent as granted;

(3) to compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition.

7.58 The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly (emphasis added).

7.59 In European Central Bank, the Bonzel test was further elaborated as follows:

“97. A number of points emerge from [the Bonzel] formulation which have a particular bearing on the present case and merit a little elaboration. First, it requires the Court to construe both the original application and specification to determine what they disclose. For this purpose the claims form part of the disclosure … though clearly not everything which falls within the scope of the claims is necessarily disclosed.

98. Second, it is the Court which must carry out the exercise and it must do so through the eyes of the skilled addressee. Such a person will approach the documents with the benefit of the common general knowledge.

99. Third, the two disclosures must be compared to see whether any subject matter relevant to the invention has been added. This comparison is a strict one. Subject matter will be added unless it is clearly and unambiguously disclosed in the application as filed.

100. Fourth, it is appropriate to consider what has been disclosed both expressly and implicitly. Thus the addition of a reference to that which the skilled person would take for granted does not matter: DSM NV’s Patent [2001] R.P.C. 25 at [195]-[202]. On the other hand, it is to be emphasised that this is not an obviousness test. A patentee is not permitted to add matter by amendment which would have been obvious to the skilled person from the application.

101. Fifth, the issue is whether subject matter relevant to the invention has been added. In case G1/93, Advanced Semiconductor Products, the Enlarged Board of Appeal of the EPO stated (at paragraph [9] of its reasons) that the idea underlying Art. 123(2) is that an applicant should not be allowed to improve his position by adding subject matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application. At paragraph [16] it explained that whether an added feature which limits the scope of protection is contrary to Art 123(2) must be determined from all the circumstances. If it provides a technical contribution to the subject matter of the claimed invention then it would give an unwarranted advantage to the patentee. If, on the other hand, the feature merely excludes protection for part of the subject matter of the claimed invention as covered by the application as filed, the adding of such a feature cannot reasonably be considered to give any unwarranted advantage to the applicant. Nor does it adversely affect the interests of third parties.

102. Sixth, it is important to avoid hindsight. Care must be taken to consider the disclosure of the application through the eyes of a skilled person who has not seen the amended specification and consequently does not know what he is looking for. This is particularly important where the subject matter is said to be implicitly disclosed in the original specification.”