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Pre- and Post-Grant Amendments are governed by Articles 123(2) & 123(3) EPC respectively
- Before grant, amendments can broaden the claim scope as long as the resulting claim is clearly and unambiguously disclosed in the original application (Article 123(2) EPC).
- Common pitfalls include intermediate
generalisations and shrinking/cherry-picked
lists, both of which may introduce a combination of
features not clearly and unambiguously disclosed originally. To
avoid this, applicants should try to:
- provide a general basis for all features in isolation as well as desired combinations of features to provide useful fallback positions;
- provide a pointer to particular selections from long lists; and
- not rely solely on Figures for support.
- After grant, broadening the claim scope (e.g. by Deleting limiting features) is not allowed.
- A Patentee may find themselves in the "inescapable trap" if a pre-grant amendment adds matter under Article 123(2) EPC, and it cannot be remedied post-grant without broadening the claim which would violate Article 123(3) EPC.
- The Result of the Inescapable trap is therefore that the Patent may is held to be invalid, and cannot be rescued via amendment.
- Careful drafting and amendment strategy is therefore essential to avoid this legal pitfall.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
