While some practitioners may frown at it, others may see its logic; however keeping in mind the strict approach of the European Patent Office is essential to obtaining a solid European Patent.
A key article in the European Patent Convention that is often referred during examination is A 123(2) that reads:
"[A] European patent application or … patent may not be amended in such a way that it contains subject‑matter which extends beyond the content of the application as filed"
This article has many implications including that which will now be briefly discussed.
When drafting a patent application one generally tends to include several enabled embodiments in the specification to provide, for example, a pool of potential limiting features.
However, amending a claim by combining features from different embodiments may be tricky; since lack of proper support indicating that those features can be combined may contravene A 123(2) by extending protection to “beyond the content of the application as filed”.
In a simple example: if a first embodiment includes features A, B and a second embodiment features B, C; then amending a claim initially directed to A, B to include feature C (and thus claim now A,B,C) may result in such an unallowable amendment.
The European Boards of Appeal have addressed this matter many times including in T 686/99 [4.3.3] where the following was stated.
“The content of the application as filed must not be considered to be a reservoir from which individual features pertaining to separate sections can be combined in order to artificially create a particular combination. In the absence of any pointer to that particular combination, this combined selection of features does not, for the person skilled in the art, emerge clearly and unambiguously from the content of the application as filed.”
As it may be difficult to foresee all possible feature combinations that one may later want to pursue, a precautionary measure that could be taken is to draft a great deal of claims covering various combinations of features and then copy paste them into the summary section of the specification as aspects of the invention.
Since the European Patent Office favorably views amendments based on limiting features mentioned in a general context in the specification, the summary section is an ideal housing for such precautions feature combinations.
It is worth mentioning that this strict approach for combining features works both ways and can also be used as a defense, since the same criteria should also be applied when assessing novelty of a European application over a piece of prior art.
According to the Boards of Appeal (e.g. T 305/87 [head note], and T 763/07 [3.1]), the question of novelty has to be considered for each individual design disclosed in the prior art. Accordingly, if a single piece of prior art discloses different embodiments comprising individual features a combination of these features in a single device will be considered novel as each individual embodiment is different from the claimed combination of features.
