PATENT | EPO Board of Appeal on extension of subject matter of a patent application

On 8 July 2025, the EPO Board of Appeal issued its decision in case No. T 0422/23 (Keltie LLP and Adamson Jones IP Limited v. Joeytech (Changzhou) Electronics Co. Ltd.) concerning the opposition against a patent application relating to a controller for electronic cigarettes. The EPO opposition division maintained the patent application in an amended form after accepting the applicant’s auxiliary request of deletion of the patent’s feature of a battery charging the controller. The opponents appealed the decision before the EPO Board of Appeal, claiming that the deletion of the feature constituted an extension of subject matter of the patent application, contrary to article 123 (2) of the European Patent Convention. The Board of Appeal allowed the appeal, finding that the opposition division had failed to correctly apply the “gold standard” test, having wrongly concluded that the deleted feature was not functionally or linguistically associated with the remaining features of the patent as filed. The Board instead found that the battery was indeed associated with the other features of the invention as filed, being connected to the other modules of the device. Based on such reasoning the Board of Appeal found that an e-cigarette controller not including such feature could not be regarded as directly and unambiguously disclosed in the original patent application and, accordingly, revoked the patent at issue.

Newsletter n. 111 – October 2025