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“Gold standard” kills “Essentiality test”

Dr. Christian Köster / April 19, 2017
“Gold standard” kills “Essentiality test”

Amendments to the claims of European patent applications and patents are always a delicate issue. Find out more about very recent developments of the related case law.

For cases in which the amendment consists of the removal of a feature from an independent claim, the EPO’s Boards of Appeal in the past occasionally applied the so called essentially or the three-point test. The essentiality test shall determine whether after the deletion of a feature the remaining subject matter is still in compliance with the original disclosure. Based on the current version of the EPO’s Guidelines for Examination the criteria of the essentiality test can be summarized as follows:

  • the deleted feature was not explained as essential in the disclosure;
  • the deleted feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve; and
  • the deletion of the feature requires no real modification of other features to compensate for the change.

In a recent decision from a Board of Appeal of the EPO, namely in decision T 1852/13 of 31 January 2017, the history of the essentiality test, criticism thereof as well as criticism of the criticism is discussed and analyzed in detail. The Board ultimately finds that the essentiality test is in conflict with the so called “gold standard” (as it is named for the first time in G 2/10). This gold standards requires that any amendment must lead to subject matter which results in the skilled person being presented with technical information which he would derive directly and unambiguously, using common general knowledge, from the application as filed. Otherwise new matter is added, which is unallowable.

In T 1852/13, the Board relies on the mentioned decision G 2/10 and a previous decision from the Enlarged Board dealing with priority issues, decision G 2/98, to conclude that the “gold standard” is superior to the “essentiality test” and that therefore the later should no longer be used. Says the Board:

“The Board has come to the conclusion that the essentiality test should not be used anymore.” (at 2.2.7 of the Reasons; unofficial translation)

Unfortunately, despite diverging case law in this respect, the Board denied a referral of the case to the Enlarged Board of Appeal of the EPO for final clarification. So there is still no final say whether the essentiality test is really dead. But it appears to be heavily injured.

T 1852/13 is in German and thus maybe not easily understood by all our readers. In case you are interested in further information please contact the author.

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Posted by Dr. Christian Köster

Dr. Christian Köster is Patent Attorney in Dennemeyer & Associates’s Munich office. His professional experience covers contentious and non-contentious matters, including worldwide patent prosecution activities with a focus on European patent practice, FTO analyses and litigation procedures in the pharmaceutical area. He has been active in the intellectual property field for more than ten years.

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