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The flexible professional as opposed to the rigid ‘average’ skilled person

According to Article 123 (2) of the European Patent Convention (EPC), no amendments may be proposed to a patent application in procedures before the European Patent Office if the amendments in question are not covered by the content of the original application submitted. The object of this article was to prevent an invention from shifting over time to become something that was actually only invented at a later date. However, there is a problem with the interpretation of this particular article.

In a patent application, the inventor tries – aided by his patent attorney – to word the abstract invention such that the reader, being a skilled person who is employed in the field to which the invention relates, gains an unambiguous and clear picture of the invention. For example, a skilled person who reads the application may not be surprised later by a claim that he could not have foreseen.

Literal text
Although a skilled person will usually be inclined to adopt a practical approach when reading a patent application and to take a view of the practical possibilities offered by a technical theory, most examiners would seem to prefer to keep to the literal text of a patent application. Although some examiners are sometimes willing to take into account what follows implicitly from the literal text of a patent application, most are rarely able to concur with what a skilled person feels is obvious after reading the original application. As such, examiners do not read patent applications as a professional would, but, as they themselves maintain, as an ‘average’ professional would. Evidently, an average skilled person is so different to an ordinary skilled person that he cannot, for example, be expected to consider a technical equivalent.

This has resulted in a very limited interpretation of the words that have been used in a patent application. In recent years, examiners have even been of the opinion that an average skilled person is not capable of incorporating a measure from one of the designs described into a different design described in the same patent application. As such, so-called intermediate generalisation is not permitted.

The patent attorney tries to overcome these types of problem as much as possible. Because of this, he or she will use so many words in an application that an inventor will often think: I just read that, didn’t I? Besides this, the patent attorney will want to include as many examples and designs as possible in an application text. The object here is to avoid a situation in which the invention ultimately does not result in the granting of a patent, purely because of a formality.