Quote from Martin Schweiger on February 9, 2023, 4:36 pm
Yes, there are ways to avoid the European Patent Office (EPO) requirement for providing a two-part form for claims. As stated in the EPO guidelines, the two-part form is only required "wherever appropriate" and may not be suitable for some inventions.
For instance, if the invention is a combination of known integers of equal status, or a modification of a known chemical process, or a complex system of functionally interrelated parts, then the two-part form may be considered artificial or inappropriate.
In the special case where the only relevant prior art is another European patent application falling within the terms of Art. 54(3) of the EPO guidelines, the two-part form can also be avoided, but the prior art must be clearly acknowledged in the description. The same applies to a complex system of functionally interrelated parts, the inventive step concerning changes in several of these or in their interrelationships.
If you have several prior art documents in the same category, such as "A" or "Y", then we can argue that it is unclear which one of these prior art document could serve as a basis for providing the separation between the preamble and the characterizing part of the patent claim. Again, the prior art must be clearly acknowledged in the description.
In addition, if the indication of prior art made in the description is sufficient to meet the requirement of Rule 42(1)(b) of the EPO guidelines, and the skilled person can see clearly which features necessary for the definition of the claimed subject-matter are part of the prior art, then the two-part form is not insisted upon.
If the applicant has convincing reasons for formulating the claim in a different form, they can present them to the EPO, and if accepted, the requirement for the two-part form can be avoided.
More information is available in the EPO Guidelines, here
https://www.epo.org/law-practice/legal-texts/html/guidelines/e/f_iv_2_2.htm
https://www.epo.org/law-practice/legal-texts/html/guidelines/e/f_iv_2_3.htm
https://www.epo.org/law-practice/legal-texts/html/guidelines/e/f_iv_2_3_2.htm