back to overview

European Patent Practice

Suggestion Regarding the Guidelines for Intermediate Generalizations

• Author: Samuel Adams
• Date: 12. June 2019

Introduction

Some objections are raised with respect to the form, particularly the syntax, of a claim, and without regard to the underlying substance of the invention. This can be frustrating for the applicant, since examination becomes entangled in formal issues and moves away from what the invention has achieved. The problem is perhaps most acute in the context of an intermediate generalisation.

An intermediate generalisation refers to extracting a feature of an embodiment to amend a claim without including at least one other feature of the embodiment in the claim. Placing strict limitations on the allowability of intermediate generalisations is a feature of examination at the EPO. Intermediate generalisations can be particularly problematic in a complex application, where any syntactical connection between features is often sufficient to fuse them inextricably together in a single embodiment. Focusing on the substance of an application when handling an intermediate generalisation is made more challenging by what appear to be inconsistencies between the Guidelines for Examination in the European Patent Office (“Guidelines”) or the Case Law of the Boards of Appeal of the European Patent Office (“CLBA”).

The following includes an analysis of the section of the Guidelines dealing primarily with intermediate generalisations, and suggestions as to how the section could be improved in view of selected decisions of the Technical Boards of Appeal.

Analysis

The Guidelines specify that an intermediate generalisation “may be allowed only if there is no structural and functional relationship between the features” extracted and the remaining features of a disclosed embodiment (H-V, 3.2.1).

The requirement for an absence of a structural or functional relationship between features of an embodiment is formulated similarly in the CLBA. However, in contrast to the Guidelines, the CLBA includes the relationship requirement as one of two parts of an “or” alternative. The second part of the “or” alternative specifies that an “intermediate generalisation is justified… if the extracted feature is not inextricably linked” with other features of the specific embodiment disclosed (II.E.1.7). Thus, the case law indicates that either requirement is sufficient to justify an intermediate generalisation on its own.

The Guidelines also include a test having two conditions, for use as an aid in assessing whether an intermediate generalisation fulfills the requirements of Art. 123(2) EPC. The test is formulated as follows:

“When a feature is taken from a particular embodiment and added to the claim, it has to be established that:

[part 1.] the feature is not related or inextricably linked to the other features of that embodiment and
[part 2.] the overall disclosure justifies the generalising isolation of the feature and its introduction into the claim.” (H-V, 3.2.1)

The use of “inextricably linked” suggests that part 1. of the test is based on the portion of II.E.1.7 of the CLBA cited above. However, part. 1 is much stricter. The negative disjunction (“not… or”) in part 1. indicates that it includes two conditions. The first condition is the absence of any relationship between an extracted feature and other features of the embodiment. The second condition is that the extracted feature is not inextricably linked to other features of that embodiment. Regarding the first condition, it appears that features are inevitably “related” by virtue of being disclosed in the same embodiment, so that there would never be a case in which a feature taken from a particular embodiment is “not related” to the other features of that embodiment. In contrast, it seems that there would be many cases in which an extracted feature is not “inextricably linked” to the other features of that embodiment. Hence, because of a vast difference in the applicability of the conditions, the first condition seems to deprive the second condition of meaning.

The scope of the first condition in part 1. of the test also extends to part 2. Taken in isolation, part 2. of the test suggests that there might be situations in which part of the disclosure of the application does not justify an intermediate generalisation, but it is justified in view of the application as a whole. Hence, it seems that part 2. is a global condition that could be sufficient to justify the intermediate generalisation on its own, even if part. 1 (a localized condition) does not apply. Unfortunately, in view of the broad scope of the first condition of part 1. and the use of the “and” to connect the two parts of the test, part 2. becomes a supplementary condition that can never be applied.

Suggestions

Citations of the decisions forming a basis for section H-V, 3.2.1 of the Guidelines could be helpful in interpreting this section. For example, with reference to II.E.1.7 of the CLBA, the allowability of an intermediate generalisation in the absence of a functional or structural relationship between the features of an embodiment can be derived from T 1067/97 and T 25/03.

Since the absence of functional or structural relationship between features of an embodiment is already reflected as a condition justifying an intermediate generalisation in the first paragraph of H-V, 3.2.1, and because part 1. of the test in H-V, 3.2.1 does not seem to add further clarity, it is suggested to reformulate part 1 to refer to a technical problem or a technical effect. The potential allowability of an intermediate generalisation in the context of a technical problem is referred to as established case law in “The Annotated European Patent Convention” by Dirk Visser (“Visser”).

In addition, it is suggested to change the “and” connecting parts 1 and 2 to an “or” in order to reflect the possibility that an intermediate generalisation may be allowable, even in the presence of a structural or functional relationship between a feature extracted from an embodiment and the remaining features of the embodiment.

Accordingly, following reformulation is suggested for the two-part test of H-V, 3.2.1:

“When a feature is taken from a particular embodiment and added to the claim, it has to be established that:

[part 1.] the newly claimed combination of features solves a technical problem unambiguously derivable from the application, in isolation from other features of the embodiment not included in the claim (T 470/05), or
[part 2.] the overall disclosure justifies the generalising isolation of the feature and its introduction into the claim.” (additions underlined)

A focus on a technical effect or a technical problem derivable from the application may lead toward a substance-based examination of intermediate generalizations and help avoid a preoccupation with formalities.

In addition to T 470/05, a number of other decisions connect the allowability of an intermediate generalisation to a technical problem or a technical effect. For example, in addition to T 470/05, decisions T 17/86 and T 284/94 are also cited in Visser. More recent decisions include T 802/13 and T 747/10.