Thursday, November 07, 2019 T 838/16 - removal of a feature requires passing gold standard to satisfy Art.123(2)/76(1)

The patio heater may be off. Does that disclose that the heater may be absent?

In the Guidelines up-to-and-including the 2017 edition, the essentiality test from T 331/87 provided a necessary and sufficient condition for the allowability of the replacement/removal of features from a claim. As of the 2018-edition, satisfying the essentiality test is a necessary condition, but no longer sufficient. The Guidelines 2018 and 2019, section H-V, 3.1, provides: 

• If the amendment by replacing or removing a feature from a claim fails to pass the following test by at least one criterion, it necessarily contravenes the requirements of Art. 123(2): (i)-(iii)
• However, even if the above criteria are met, the division must still ensure that the amendment by replacing or removing a feature from a claim satisfies the requirements of Art. 123(2) as they also have been set out in G 3/89 and G 11/91, referred to in G 2/10 as "the gold standard"”. 

The amendments to the Guidelines seems to reflect recent developments in case law, such as T 910/03 which questioned the applicability of T331/87. The current decision follows the approach in the current Guidelines, and applies the "gold standard", when checking Art. 76(1) for a divisional relative to its parent rather than Art. 123(2) for an amendment: any amendment must be within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively relative to the date of filing, from the whole of the documents (description, claims and drawings) as filed. 

Friday, May 19, 2017 T 1852/13 - Essentiality test vs. gold standard

The gold(en) standard?

This case concerns a divisional application in which a feature was removed from claim 1 with respect to claim 1 of the parent application, and whether such removal satisfies the requirements of Art. 76(1) EPC (and equivalently Art. 123(2) if it were to be performed as amendment).

This situation is dealt with by the 'essentiality test' of T 331/87.

This case discusses the essentiality test as it differs across its various versions (English original vs. German translation, original decision vs. guidelines), how it was applied in the recent past, criticism on the test including the criticism raised previously in T 910/03, and most importantly, how it fits into the 'gold standard' established by G 2/10.

After various deliberations, the Board considers the essentiality test to be dead: "Die Kammer ist zum Schluss gelangt, dass der Wesentlichkeitstest nicht mehr zum Einsatz kommen sollte", with one of the reasons being that the original phrasing of 'may not' in T 331/87 leaves open the possibility that all three conditions of the test are satisfied yet that Art. 123(2) is still violated.

As such, the Board considers that the essentiality test cannot replace the gold standard even in its specific application area (removal or replacement of a feature).

Is the essentiality test now finally dead? After T 910/03 it languished but occasionally reappeared.

The Board refrains from referring the matter to the EBoA as it considers such referral not to be decisive in the present case, since according to the Board a same conclusion would be reached using both the essentiality test and the gold standard (being that the removal violates Art. 76(1) EPC).