Added Matter (3) - Combining features from separate embodiments

The requirement that amendments must be directly and unambiguously derivable from the original application can cause particular difficulties where a patent application discloses more than one embodiment and each embodiment includes different features. The EPO consider each embodiment in a description to be a standalone disclosure and that without specific reasons, features cannot be shared across embodiments. This is often described as the description not being a reservoir of information from which features can be cherry-picked.

For example, an application separately describes and claims two embodiments of printers, A and B, each having different features. A specific print head arrangement is only described for printer A. Without further explanation there is unlikely to be basis for an amendment to the claims for printer B to include the print head arrangement of printer A. If the print head arrangement turns out to be the inventive feature, this can limit protection as it not possible to secure protection of the other features of printer B with the print head arrangement.

In order to be able to combine features from different embodiments, it is necessary for there to be disclosure which gives a “direct and unambiguous” link between the embodiments, which causes the reader to understand the features are intended for combination with other embodiments.

Many specifications include standard text noting that embodiments can be combined, but that is often not sufficient as it is not seen as “direct and unambiguous” for any specific set of features, but rather only says any feature could be combined with any other feature, which is not strong enough to meet the European requirements. This type of text is better than nothing, and may save a case in an emergency, but it generally cannot be relied upon.

A step up would be text given in relation to each embodiment saying, for example, “features disclosed with respect to embodiment B may be combined with features of this embodiment”. This gives a direct pointer between the embodiments and so increases the direct linking of them, but could still be held to be ambiguous as it sweeps all features together, particularly as it may include features which cannot be combined or are contradictory.

Best practice is therefore to include explicit disclosure of the features you might want to combine for each embodiment. This does not require the disclosure of each feature to be repeated, but rather that there is a direct link, for example, “the print head arrangement described for printer A above may also be used in this printer”. Such disclosure directly and unambiguously links the embodiments and features and hence provides basis for a combination.

Such drafting practice requires careful thought to explore possible combinations and describe them, but is a valuable investment to ensure scope of protection is not lost.

The same principle applies when combining features from dependent claims. If there are several dependent claims which all depend on claim 1 only, each combination is considered independent; the combination of claims 1 and 2 is independent from the combination of claims 1 and 3. Such a claim structure is therefore unlikely to automatically provide basis for the features in claims 1, 2, and 3 together. Careful consideration is therefore needed when structuring dependent claims to ensure all combinations are included.

In the European context this is easily addressed by the use of multiple dependencies, but such claims are not permitted in many jurisdictions and so they are often not included. It is, however, often possible to include multiple dependencies in the application as filed, which can then be removed during prosecution. This ensures that there is basis for Europe and avoids problems in other countries. For example, multiple dependencies can be included in the PCT claims, and then amended for each country. Alternatively, since the PCT claims do not attract claims fees, separate groups of claims for Europe and other countries, with and without multiple dependencies, can be included and the appropriate group selected for each country. Another option is to include a comprehensive set of claim counterparts in the summary section, which includes language to cover additional combinations.

Careful practice when drafting should ensure problems due to combining embodiments are avoided during prosecution, but this does require careful consideration and effort to ensure relevant combinations are described. Since the same added matter rules apply for priority claims, ideally the priority application would also be drafted with these points in mind, for example including multiple dependencies, to ensure priority is not lost.

This article is a part of our EPO Practice and Peculiarities series. Click here to explore.