In this case, to distinguish the claimed subject matter from an anticipatory document under Art. 54(2) EPC, claim 1 was amended to include a feature which does not explicitly appear in the original application. More specifically, claim 1 was directed to a process for forming a printing product and included the step of applying a metallic ink to the surface of [a] cured energy curable layer. This step was amended to define this applying as being done directly to the intact surface of the cured energy layer.
The appellant (patent proprietor) argued that this amendment was allowable because
According to the Board, since the term “intact” was not used, let alone defined; in the original application, the term was to be interpreted in accordance with either its common general meaning or its common particular use in the field under consideration. It was the Board’s view that in the present case, “intact” could designate both, a surface that was not altered (i.e. untouched or in the original state) or a surface that may have been altered to some extent but not in a way that would have diminished its function (i.e. not damaged).
Thus, with respect to argument (i), the Board expressed the view that it was likely that the surface in question as described in the application had not undergone any major changes before the application of the metallic ink. However, the original application did not concern itself with the state of the surface at all. Hence, it could not be said that there was a direct and unambiguous disclosure of the fact that the surface was in its original state. The mere likelihood or plausibility of this being the case could not replace direct and unambiguous disclosure.
According to the Board, the applicable standard is “beyond reasonable doubt”. The very requirement of an “unambiguous” disclosure under the gold standard indicates that a strict standard has to be applied and that the actual existence of a disclosure is not a matter of probabilities.
In this decision, the Board pointed out that the practical relevance of the distinction between the “balance of probabilities” and “beyond reasonable doubt” is often overestimated. According to the Board, both standards are only fulfilled if the deciding body is persuaded that the alleged fact is true (T 545/08). In the present case, the Board is not persuaded that the feature in question can be deemed implicitly disclosed, directly and unambiguously.
With respect to argument (ii), the Board expressed the view that the jurisprudence of the EBoA specifies that the "gold standard", developed in opinion G 3/89 and decision G 11/91 and reaffirmed by decision G 2/10, is the general rule to be used when examining the compliance of amendments with Article 123(2) EPC. Undisclosed disclaimers constitute an exception to this rule. They are governed by the rules laid down in decision G 1/03.
G 1/93 (point 2) refers to amendments that "without providing a technical contribution to the subject-matter of the claimed invention, merely exclude protection for part of the subject-matter of the claimed invention as covered by the application as filed". These type of amendments would constitute an exception to the gold standard and the appellant argued that this was the case of the adjective “intact” of the present case. According to the Board, this passage also appeared to concern undisclosed disclaimers (examined in greater detail in G 1/03). Furthermore, inserting the feature “intact” provided a technical contribution because damage to the surface would result in a reduced reflectivity of the printed product, while paragraph  of the published application was emphasizing the importance of high reflectivity.
The board concluded that the amendment in question could not qualify as an amendment as per point 2 of G 1/93. Consequently, an exception to the gold standard did not apply. As there was no explicit disclosure of the feature “intact” in the original application and the Board was unable to confirm its implicit disclosure, the amendment was not allowable pursuant to the gold standard and was held to extend the subject-matter beyond the content of the application as filed.
This case relates to an amendment in a claim directed to a composite comprising a rubber and a resin. The resin was characterized amongst others by the atoms having an orbital interaction coefficient S of not less than 0.006. Coefficient S is represented by the following formula (1):
Granted claim 1 defined that each Ec, CHOMO,n, EHOMO,n, CLUMO,n and ELUMO,n represented values calculated by a semi-empirical molecular orbitel method MOPAC PM3. In opposition, claim 1 has been amended to define that only CHOMO,n, EHOMO,n, CLUMO,n and ELUMO,n are values calculated by said method and to define Ec as being -8eV for an organic peroxide.
For the opposition division, this amendment complied with the requirements of Art. 123(3) EPC, because the patent referred explicitly (par. ) to a specific Ec value of -8 eV for organic peroxides, and there was no indication that the Ec of these substances could take any other value. There was thus no proof that substituting the calculation of Ec using the MOPAC PM3 model with the specific value of -8 eV for organic peroxides extended the scope of protection beyond that of the claims as granted.
The Board noted that the patent explicitly indicated (par. ) that the Ec value could be estimated in one of the following ways:
Thus, the Ec values calculated with the MOPAC PM3 model would vary for the different organic peroxides. By contrast, the predetermined Ec value of -8 eV for organic peroxides represented an approximation for the generic type of organic peroxides which was used "for convenience" in order to avoid having to perform calculations for each specific organic peroxide.
Considering this, the alternative methods in par.  of the patent (i.e. points i) and ii) above) could not be considered as convergent or redundant options, but necessarily represented two distinct and independent alternatives to estimate Ec.
Thus, the Board expressed the view that whether Ec takes a range of values or a single value for the organic peroxides, would not necessarily narrow or broaden the scope of protection, but simply gave rise to different calculated S values, which in turn implied that some pairs of polyamide/organic peroxide falling outside claim 1 as granted might fall within claim 1 at issue (or the other way around).
According to the Board, contrary to the proprietor's argumentation, it was not the opponent but the proprietor who carries the burden of proof to show that the amendments are allowable (see Case Law Book 9th ed., II.E.5). In fact, even if, as proposed by the proprietor, the standards used to assess novelty were to be applied, the burden would still be on him, because the amendment at issue involved changes in calculations relating to an unusual and obscure parameter (see T 1764/06 and T 1920/09), which further highlights the responsibility of the proprietor to clear out any possible doubt concerning the extension of the scope of protection under Article 123(3) EPC.
Furthermore, when assessing compliance with Article 123(3) EPC, the Boards normally apply the standard of "beyond reasonable doubt" and "the slightest doubt that the scope of the patent as amended could cover embodiments not covered by the unamended patent would preclude the allowability of the amendment".
Thus, in the absence of evidence clarifying the implications of the amendment of the method to estimate Ec and considering that, as explained above, it is the proprietor who carries the burden of proof, the opponent should be given the benefit of doubt.
Therefore, the Board concluded that the amendment of the method to calculate Ec in claim 1 at issue was considered to extend the scope of protection of the patent as granted. The decision of the opposition division was set aside and the patent was revoked.