The test for added subject matter

Comparing disclosures: clearly and unambiguously disclosed

7.73 Some EPO decisions have adopted a “novelty test” when assessing the allowability of amendments. These decisions may provide useful guidance when considering whether a document provides a clear and unambiguous disclosure of matter proposed to be incorporated by an amendment. For example, as set out in the “Lead Alloys” decision T 0201/83:

“The test for compliance with Article 123(2) EPC is basically a novelty test, i.e. no new subject-matter must be generated by the amendment. Normally the test for novelty calls for an inquiry whether or not a document, or article in use, contains sufficient information so that the person skilled in the art could derive the subject-matter in question from it directly and unambiguously, including any features implicit therein … When this maxim is applied to patent applications in order to test the propriety of proposed amendments, the first condition must be that the feature of the amendment should be contained within the same document or would have to come from the relevant background art to be incorporated in that disclosure in consequence of Rule 27(1)(d) EPC. It is, nevertheless, also the view of the Board that the requirement is not satisfied unless the skilled man could directly recognise the same as a combination of features available from the document.”

7.74 The third step set out in Bonzel has been acknowledged as being substantially the same test as that applied in this case (CIPA Guide to the Patents Act, Seventh Edition at 76.18).

7.75 The “novelty test” is applied only to the matter which is added by the amendment. That is to say, the matter disclosed in specification after amendment is compared with the matter disclosed in the specification as filed in order to determine the subject matter generated by the amendment. If the subject matter generated by the amendment would constitute a novelty-destroying disclosure for a hypothetical claim whereas the original matter would not, then the amendment would not be allowable.

7.76 For example, in EPO decision T 194/84 the invention involved the use of natural cellulosic fibres in the electrode of a storage battery cell. An amendment was proposed to broaden the claim to the use of cellulosic fibres in general. The applicant argued that the amendment was allowable as the original application could be cited against the novelty of a more generic claim to cellulose fibres. However, the Court noted that the consideration should be based on the difference in matter between the specification prior to amendment and the specification after amendment, in this case the use of nonnatural cellulosic fibres. Thus the original matter would not constitute a noveltydestroying disclosure against a hypothetical claim to the use of non-natural cellulose, and accordingly the amendment was not allowable.