The requirements for original disclosure of amended subject-matter in a claim are strict under the provisions of the European Patent Convention. Several comparable harsh decisions in this regard were seen recently. However, now also a more applicant-friendly decision can be reported. Specifically, in decision T 1544 from 16 November 2012, a Board of Appeal of the EPO came to the following conclusion: that technical content of original color drawings should be determined by taking into account the available evidence when establishing the content of the application as filed.
In the decided case, the application as originally filed contained such color drawings. The party which alleged an unallowable extension beyond the original disclosure argued that the filing of color figures is not allowed under either the PCT or the EPC. The Board rejected this argument because filing of color figures in the original application is merely a formal deficiency under both the PCT and the EPC which can be remedied on invitation. A second objection was that no information concerning color figures was available to the public, neither from the black-and-white publication nor from the electronic file in the European Patent Register. The Board held that what is decisive is the applicable Article 123(2) EPC, which explicitly refers to "the content of the application as filed". This expression was considered by the Board to leave no room for interpretation. It was therefore concluded that, if the figures of the originally filed application were in color, it is these figures which must be used as the basis for determining whether subsequent filed figures contain added subject-matter.
Whilst the decision reported herein should not be seen as an encouragement for applicants to include colored figures in fresh applications, sometimes only colorful images or other representations of technical information are available. The decision makes it clear that such colored matter may indeed serve to originally disclose a certain technical teaching which later shall not be unduly limited when it comes to assessing whether or not subject‑matter extends beyond the content of a patent application as filed.