T 1366/24: Correcting Translations to Overcome Added Matter Objections
The Technical Board of Appeal clarifies how filing a corrected translation under Article 14(2) EPC can resolve an added matter objection by restoring the original technical context of a product-by-process feature.
The assessment of added matter in a product-by-process claim depends on the original context of the incorporated method steps, which can be clarified during appeal by filing a corrected translation of the application as filed under Article 14(2) EPC.
How did a corrected translation resolve the added matter objection?
In T 1366/24 (reasons 3.1), the Technical Board of Appeal reviewed a refusal based on Article 123(2) EPC. The examining division had held that a heating step added to claim 1 was originally disclosed only as an analytical method for assessing turbidity, not as a preparation step. The application was originally filed in Korean under the PCT. During the appeal proceedings, the appellant submitted a corrected English translation of paragraph [0064] under Article 14(2) EPC. The Board accepted this corrected text as accurately reflecting the application as filed, demonstrating the procedural value of correcting translation errors to clarify the original technical context of a disputed feature.
Why did the Board classify the heating step as a preparation method?
The disputed amendment defined the composition as a colloidal solution obtained by dispersing the copolymer in water and subsequently heating it to a temperature between the melting point of the copolymer and the boiling point of water (reasons 3.3). The examining division argued this heating step was merely an analytical assessment. However, the Board found that the general preparation method was disclosed in paragraphs [0062] and [0063], while the corrected paragraph [0064] detailed a specific preparation step to achieve a colloidal solution with no visible particles (reasons 3.8.1). Furthermore, the actual analytical method for assessing turbidity was disclosed elsewhere in the description and relied on dilution with water, not heating (reasons 3.8.2). Consequently, the Board concluded the heating step was disclosed in the original context of preparing the composition.
Does omitting descriptive results from a method step add matter?
When incorporating the heating step from paragraph [0064] into claim 1, the applicant omitted two original phrases, namely that "the particle size cannot be discerned with the naked eye" and that "a colloidal phase in which no insoluble foreign substance is present is formed" (reasons 3.6). The Board agreed with the examining division that omitting these passages did not offend Article 123(2) EPC. Because claim 1 already required the product to be a "colloidal solution", the omitted text merely described features directly and unambiguously derivable from such a solution. The absence of visible particles and insoluble substances is directly and unambiguously derivable from the claimed colloidal solution, meaning the omission did not introduce subject-matter extending beyond the content of the application as filed.
What must practitioners consider when amending product-by-process claims after this decision?
When amending a claim to include product-by-process features, applicants must ensure the method steps are genuinely drawn from a preparative context rather than an analytical one. If an examining division mischaracterises a preparation step as an analytical method due to unclear translated wording, practitioners should immediately review the original language text. As this decision illustrates, filing a corrected translation under Article 14(2) EPC can successfully realign the English text with the original technical context. Furthermore, when extracting method steps from the description, applicants may omit descriptive results or visual observations if those results are directly and unambiguously derivable from the defined product, such as the clarity of a colloidal solution.
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