New EPO Guidelines: what do they mean for added subject matter?

The perfect venue for the new
Guidelines launch party

New edition for new additions ...   On Wednesday of last week the European Patent Office (EPO) published an update to its Guidelines for Examination, the main resource used by examiners at the EPO for guidance in how to apply the provisions of the European Patent Convention (EPC) to the patent examination process.  You don't need to read it right now, because the new Guidelines don't come into force until 1 November -- but we don't like our readers to be caught unawares so we're telling you now.  While every word of it is of the utmost importance and fascination, of particular note is the insertion of a new paragraph in the section of the Guidelines setting out the “general rules” for determining the content of the application as originally filed. This is significant for patent applicants because, as the EPC states in its immortal prose, a European patent/application 

“may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed” (Art. 123(2) EPC).

A new paragraph H-IV 2.3 states: 

“When assessing the conformity of the amended claims to the requirements of Art. 123(2), the focus should be placed on what is really disclosed to the skilled person by the documents as filed as directed to a technical audience. In particular, the examiner should avoid disproportionally focusing on the structure of the claims as filed to the detriment of the subject-matter that the skilled person would directly and unambiguously derive from the application as a whole.”

Is it so difficult for Examiners
to change their minds? Some
higher life forms do this
all the time ...

 This paragraph is considered to be a response by the EPO to the common view among patent practitioners that the EPO’s stance on added subject matter can be too strict [readers may recall mention by Christopher Rennie-Smith, here, that some users of the system have noted the Boards of Appeals' "bewildering or incomprehensible attitude" towards added subject matter], with the result that applicants can be overly restricted in the amendments that they are allowed to make. The introduction of this paragraph will be interpreted by many as an attempt by the EPO to redress the balance [but how will others interpret it, Merpel wonders]. In particular, the paragraph relates to the situation in which the claims are amended by the introduction of subject matter that was only disclosed in the description of the application as filed. Examiners are instructed to consider the disclosure of the application as a whole, as read by a person skilled in the art, rather than focusing too strongly on the structure of the claims as filed.

The new paragraph could be seen as a “softening-up” of the EPO’s approach to the issue of added subject matter. This will be good news to patent applicants, as it would provide more freedom to amend claims using subject matter from the description. However, it remains to be seen whether this update to the Guidelines will bring about a noticeable change in the practice of EPO examiners, or whether it will be seen as merely clarifying the EPO’s current approach (A katpat goes to Kilburn & Strode's Jeremy Smith for supplying this useful information).