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22 April 2013
According to Section 13 of the Patents Act, any amendments to a patent application must be supported by the application as filed: "A patent application must not be amended in such a way that protection is claimed for subject matter which was not disclosed in the application at the time it was filed."
Consequently, amendments that incorporate additional features into independent claims, or that replace general definitions with specific definitions, may limit the scope of protection in a way that is unsupported by the application as filed, and may thus be contrary to Section 13.
For example, in a chemical patent application, a limitation to a restricted temperature or range of temperatures for which no 'specific effect' has been demonstrated beyond the effect for the whole range of temperatures is unacceptable.
'Specific effect' in this context, as found in the patent guidelines, may simply mean that the selection is actually mentioned in the application as filed as a preferred selection without the stipulation of additional experimental data. However, this provision is vague and could be interpreted to mean that in order to cover all bases, a large number of selections or ranges must be incorporated into the application as filed if it is unclear at the date of filing which selection or ranges will end up in the granted patent.
Objections based on Section 13 have been raised by examiners in several cases, in which alternatives were deleted in a claim within a list of variables where no justification of this selection could be found in the application as filed. Part C, Chapter VII(3.5) of the patent guidelines and patent practice historically consider this as an unallowable 'random selection'.
However, the latest version of the patent guidelines stipulates that it is possible to delete certain embodiments, provided that these embodiments are found as alternatives in the original claims or as alternatives specifically mentioned in the description. The deletion of parts of the subject matter based on more than one list is normally not allowed (T 12/81).
The guidelines provide the following example:
The application as filed contained the following claim:
"A polymer mixture XY containing as a filler, graphite, talc, asbestos or silica".
Prior art: "A polymer mixture XY containing asbestos".
Restricted and allowable claim: "A polymer mixture XY containing as a filler, graphite, talc or silica".
This example allows for 'reasonable' amendments and restrictions in patent claims, provided that the alternatives are listed at the date of filing without the need for disclaimers. The above example is also found in Part H, Chapter V(3.3) of the European Patent Office examination guidelines, which further harmonises Norwegian and European patent practice.
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Arne Lund Kvernheim