The test for added subject matter

Basis of the consideration: the application as filed

7.60 The Examiner must construe the document through the eyes of the person skilled in the art and with the benefit of the common general knowledge of such a person. As with the construction of any document, Examiners should take a purposive approach to construction.

7.61 Notably the legislation sets out that consideration of post-grant amendments is done on the “specification” rather than the “application” as is set out in the legislation for pre-grant amendments (the application includes both the specification and the abstract as per Section 25(3)). However, the same consideration applies to both pre- and postgrant amendments: that is, the whole of the description, any drawings and claims may be considered. The comparison is done between the specification as filed and the specification as proposed to be amended.

7.62 The abstract is not taken into account when determining what the application disclosed at filing (Abbott Laboratories Ltd. v Medinol Ltd [2010] EWHC 2865 (Pat)). The purpose of the abstract is to provide technical information about the invention (Section 25(7)). The abstract should therefore be consistent with the specification. If it is, then it adds nothing in the way of disclosure. If it is not, then it is incorrect. Examiners should therefore disregard the content of the abstract in determining whether an amendment adds matter.

7.63 Similarly, a priority document does not form part of the application, and any matter disclosed in the priority document but omitted from the specification as filed may not be subsequently added. For example, if figures, sequence listings or the like are disclosed in the priority documents but omitted from the application, the applicant may not rely on the priority document as a basis for amending the application (see T 260/85 Coaxial Connector and VEB Kombinat Walzlager [1987] RPC 405).

7.64 In cases where a listing of biological sequences was included after the date of filing of the original application, the determination of the allowability of such a sequence listing will be decided depending on the facts of the case.