Added Matter & The EPO

Just Because You Managed to Slip Something Past It The First Time, You May Not Have Won!*

By APLF Member Firm Kilburn & Strode, London U.K.

In an earlier appeal, T984/00, from the Examination Division’s decision to refuse the application, an amendment had been found allowable as not adding subject-matter and the patent had been granted in amended form. In this opposition, the opponent nevertheless argued that subject-matter had been added. The patentee claimed that it was contrary to the need for legal certainty for one Board to ignore an earlier decision of another and also that it would be unfair for the Board to penalize the patentee for introducing an amendment which it had been compelled to do to save the application from being refused.

The opponent pointed to T 167/93, suggesting that ex parte appeal proceedings have no binding effect on subsequent opposition proceedings and setting out some very limited criteria for the doctrine of res judicata to apply.

The Board noted that Article 113(1) EPC provides that decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to comment; it held that this permitted here the issue being considered a second time in judicial proceedings. As in the actual case the Board found no implicit or explicit basis for the added wording in the application as filed, the patent was revoked.

* T 1099/06: Transgenic dicotyledonous plant cells and plants / Max-Planck-Gesellschaft zur Förderung der Wissenschaften e.V.; TBA Decision of 30 January 2008


We cannot emphasize enough that adding subject-matter contrary to Art. 123 EPC is not merely a ground of refusal in the ex parte examination and opposition procedures but a PERMANENT ground of invalidity of a granted patent — it’s like a time-bomb ticking away under the patent.

The information provided in this article is, of course, of a general nature and should not be considered as legal advice; if you have any specific questions, please contact Paul Chapman at in London, UK. E-mail: Visit the website at

The information contained in this alert is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.


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