(Turbochargers/NAPIER TURBOCHARGERS LIMITED ) of 17.12.2014
In Europe objections may arise when the amendments introduce implied features. That is, features that are not explicit in the original disclosure but are rather implied.
In order to allowable the amendments in question must be directly and unambiguously derivable by the skilled person from the application as filed, using normal reading skills and supplementing by his/her common general knowledge. In addition, where amendments concern features added from drawings, ‘the structure and function of the feature must be clearly, unmistakably and fully derivable from the drawings, as well as the fact that they can be isolated from the other features shown but not claimed’.
The case of EP1394387 demonstrates how support for an amendment to the scope of the invention can be derived from a drawing. The person skilled in the art will be construed as will the common general knowledge attributable to that person.
In EP1394387 it was seen that:
‘The skilled person, who will be familiar with the different turbocharger impeller design and construction types, will recognize immediately from the figures that these show blind hole type connections of shaft and impeller body. Both structure and function of the blind hole impeller, with its dead-end hole allowing a stub of the shaft to enter the hub whilst leaving most of the hub solid, are immediately evident to the skilled person. Not only will he immediately read from the figures that the impeller type concerned is of the second kind mentioned above, that is the blind hole type, but considered in conjunction with the text it will be immediately clear to him that the patent addresses the problem of walking in that context, i.e. in relation to the particular type of connection shown in the figures. There is no suggestion in the patent that the inventive concept might apply to any through-hole type connections. In this regard the skilled person will recognize this feature as distinctive of or intrinsic to the claimed inventive concept, and not as just one of various interlinked features that define a particular embodiment. Consequently, he will perceive this feature isolated from any other details shown in the figures.’
Thus questions involve both: (i) immediate recognition; and (ii) what is seen to be distinctive of the claimed inventive concept.
In 2021 as of now (September 2021), there have been at least 80 European Board of Appeal cases concerning whether features would be “directly and unambiguously derivable” from the specification.
The case also concerns the late filing of evidence. One online article dated notes that stricter rules relating to late filed evidence have now come into force.
(Numbering and indentation issues may be present below)