Can Added Subject-Matter be Removed Post-Grant?
Background Article 100(c) EPC allows a European patent granted from a divisional application to be opposed on the ground that the subject-matter of the patent extends beyond the content of the earlier application as filed, in other words because the divisional application does not meet the requirements of Article 76 EPC. Current practice allows a patent proprietor to remove such added subject-matter during opposition proceedings and the patent may be maintained in an amended form. If such added subject-matter is not removed the patent is revoked. Given the referrals in G 1/05 and G 1/06 this practice has been questioned in relation to patents granted from divisional applications. G 3/06 Technical Board of Appeal 3.2.3 considered an appeal against a decision of the Opposition Division to maintain a patent in amended form (T 1040/04). Graham Boon, a partner at Elkington and Fife, is jointly representing the patentee in these proceedings. The patent in question was granted from a division
