The test for added subject matter

Matter which extends beyond the original disclosure

7.82 The reference in Section 84(2) to “any matter extending beyond that disclosed in the application as filed” refers to matter directly in relation to the invention.

7.83 The underlying principle of whether matter relevant to the invention has been added is that an applicant should not be allowed to improve their position by adding subject matter not disclosed in the application as filed. A key consideration is “whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification.” (Jacob J in Richardson-Vicks Inc.’s Patent [1995] RPC 568).

7.84 One approach taken by the Courts has been:

“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.(European Central Bank v Document Security Systems Incorporated at [101]).”

7.85 The addition of prior art information or other material not directly related to the invention would generally be considered an allowable amendment. However, if the amendment changes the way in which the person skilled in the art would understand the invention from what was originally indicated or changes the nature of the problem to be solved, then it may not be allowable.

7.86 For example, inclusion of prior art which shows the inventionpossesses certain advantages will be allowable only if the advantage would have been apparent to a person skilled in the art in possession of that prior art (Palmaz’s European Patents (UK) [1999] RPC 47).