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.
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