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III.B.1. General issues
In T 325/95 the patent proprietor amended a granted claim by introducing limiting features disclosed only in the description. The appellant (opponent) argued that claim 1 as granted did not actually afford any scope of protection whatsoever, because the claim was invalid, its subject‑matter lacking an inventive step. Since the features added to claim 1 were not set out in any of the dependent claims as granted, the subject‑matter now covered by amended claim 1 was not covered by any of the claims. Therefore, by introducing features disclosed only in the description the scope of the claims had been extended within the meaning of Art. 123(3) EPC 1973.
The board pointed out that this argumentation was based on the assumption that the extent of protection referred to in Art. 123(3) EPC 1973 would depend not only on the actual wording of the claims, but also on their validity in view of the prior art. This assumption however was not supported by the explicit statement in Art. 69 EPC 1973 that "the extent of the protection conferred by a European patent ... shall be determined by the terms of the claims". Appellant's submissions in effect also implied that claims amended in opposition proceedings should always have a counterpart in the set of claims as granted. This was not in line with the consistent case law of the EPO either. Attention was drawn for instance to decision G 2/88 (OJ 1990, 93), which ruled that replacement of a granted claim to a compound or composition by a claim directed to a new use of the compound or composition was admissible under Art. 123(3) EPC 1973.
In T 1149/97 (OJ 2000, 259) the board decided that, without opposition, issue of a decision to grant a European patent normally constituted a cut-off point for making amendments to the application documents in the European proceedings. If an opposition has been filed, cut‑off effects due to the grant of a patent might be seen in the restrictions which R. 57a, R. 87 and Art. 123(3) EPC 1973 imposed on further amendment of the patent specification. Although Art. 123(3) EPC 1973 addressed only the claims of the European patent, amendments to the description and the drawings might also extend the protection conferred in accordance with Art. 69(1) EPC 1973.
If, in view of Art. 84 and Art. 69 EPC 1973, the application documents were adapted to amended claims before grant, thereby deleting part of the subject-matter originally disclosed in order to avoid inconsistencies in the patent specification, as a rule subject-matter deleted for this reason could not be reinserted either into the patent specification or into the claims as granted without infringing Art. 123(3) EPC 1973. An analogous finding applied to subject-matter retained in the patent specification during such adaptation for reasons of comprehensibility, but indicated as not relating to the claimed invention.
Dealing with the allowability of amendments in T 81/03, the board detailed why it considered that the facts of the case dealt with in T 1149/97 (OJ 2000, 259) differed from those of the case in point, contrary to the opponents' allegation of a substantive cut-off effect of the grant of a European patent. In reply to the opponents' second line of argument it further stressed that Art. 69 EPC 1973 and its Protocol were to be applied in proceedings before the EPO whenever it was necessary to determine the protection conferred (see for example G 2/88, OJ 1990, 93). Equivalence considerations obviously often played a prominent role in national infringement proceedings, and although equivalents were not mentioned in the EPC 1973, they would be in the Protocol on Art. 69 of the revised Convention, EPC 2000 (OJ SE 1/2003, 73). Nevertheless, in spite of the indisputable importance of the concept of equivalence for the determination of the scope of protection, if the opponents had been right in their allegations, it would never be possible to amend a claim during opposition proceedings - although this was provided for in the Convention - since the addition of any new feature to some extent necessarily reduced the weight of the features in the claim as granted. This was particularly true when the subject-matter of the granted claim was not new, the situation in which amendments were most called for. For that reason the argument could not be accepted. The board thus found that the general, abstract concern that the addition of a feature to a claim after grant led to an extended scope of protection because the resulting combination of features might give rise to a different evaluation of equivalents in infringement proceedings was not in itself a sufficient reason for not allowing the addition of limiting features under Art. 123(3) EPC 1973.
The board agreed with the patent proprietor that there was no basis in the EPC 1973 for the idea that amendments after grant had to be based on subject-matter contained in the patent specification. The wording of Art. 123(2) EPC 1973 was unambiguous. It was Art. 123(3) EPC 1973 which was intended to protect the interests of third parties, as pointed out by the Enlarged Board in G 1/93 (OJ 1994, 541). In the board's view it followed that amendments to a European patent could be based on the whole reservoir of features originally disclosed in the corresponding application, provided that Art. 123(3) EPC 1973 was not infringed by such amendments, due account being taken of the provisions of Art. 69(1) EPC 1973.
In T 241/02 in the board's view neither the fact that the appellant (proprietor) approved the text of the patent in suit nor considerations with respect to legal certainty added to the requirements relating to amendments in R. 57a or Art. 123(2) EPC 1973. The grant of a patent therefore did not necessarily constitute a final and automatic cut-off point ruling out any reinsertion of deleted subject-matter (in the case at issue, reinsertion of portions of the description relating to the process claimed). The said reinsertion complied in this case with both R. 57a and Art. 123(2) EPC 1973. It remained therefore for the board to examine whether the requested reinsertion satisfied Art. 123(3) EPC 1973. The opposition division had concluded on the basis of T 1149/97 (OJ 2000, 259) that reinsertion would not be possible, since it would contravene Art. 123(3) EPC 1973, but without referring to any specific parts or making any connection between parts to be reinstated and any concrete conclusion as to how the product claims would be extended in contravention of Art. 123(3) EPC 1973. The board decided that, by contrast with the situation in T 1149/97, in the case in point the appellant had deleted too much of the description, overlooking the relevance of parts of it to these remaining claims. According to the board, T 1149/97 did not lay down a strict rule. It required that an examination of a request for reinsertion be carried out with a view to establishing whether or not Art. 123(3) EPC 1973, on the facts of each case, was indeed infringed. Since the requested reinsertion had to be examined in detail, in the case at issue the opposition division's decision was not sufficient to reject the reinsertion as a whole. Since at that point it was uncertain which parts of the requested reinsertion still might violate one or more requirements of the Convention and the further patentability criteria had not yet been examined in the opposition proceedings, the board decided to remit the case for further prosecution.
In T 975/03 the appellants/opponents referred to decisions T 420/86 and T 61/85 in support of their argument, regarding the reintroduction of the feature of claim 1 deleted before the grant of the patent, that the appellant/patent proprietor could not reinsert into the patent a feature it had deleted during the examination procedure, as such deletion was equivalent to abandonment. In the board's view, however, no legal grounds for the latter assertion were indicated in T 420/86 (or in T 61/85). This decision had also preceded the ruling in G 7/93 (see point 2.1). The board even held that the grant of a patent did not necessarily establish an automatic and final cut-off point which ruled out any reintroduction of deleted subject-matter. The amendment in the case at issue was therefore allowable, provided that it did not breach the requirements of R. 57a and Art. 123(2) and (3) EPC 1973. The feature in question was introduced by the appellant/patent proprietor in order to counter a novelty objection; therefore, the amendment complied with the requirements of R. 57a EPC 1973. The feature was contained in the application as filed, e.g. in claim 1, so the requirements of Art. 123(2) EPC 1973 were also met. Since the feature limited the extent of protection conferred by the claim, the requirements of Art. 123(3) EPC 1973 were met, too. The board therefore concluded that inserting the feature of claim 1 was allowable with respect to the formal requirements of the EPC. The board also decided to refuse the request for referral of a point of law to the Enlarged Board of Appeal. After analysing the case law, the board concluded inter alia that none of the cases involved the constellation in which a feature was allowable under Art. 123(3) EPC 1973 but was then disallowed because of a supposed cut off effect or an abandonment.
Decision T 190/99 gives a guidance on how to interpret a claim as granted for the purpose of Art. 123(3) EPC.
In T 666/97 the product claim of the auxiliary request no longer included a process feature which was included in the product claim as granted. In the board's view it followed from the fact that the subject-matter for which protection was claimed in the auxiliary request was a product that it could only be characterised by features manifest in/on the product itself. That meant that manipulations taking place during product manufacture but not resulting in product features were of no relevance to the definition of the claimed product and hence to the scope of protection of the claim. That was an unavoidable implication of the established case law of the boards of appeal, under which the subject-matter of a product-by-process claim derives its novelty not from new procedural steps but purely from structural features (see T 205/83, OJ 1985, 363).
Thus, to resolve the issue of compliance with the requirements of Art. 123(3) EPC 1973, what had to be decided was whether the omitted product-by-process feature was technically significant for the definition of the claimed product, i.e. whether it was a product feature. The board found that in the present case the omitted feature was not a product feature. Thus the claim had not been extended within the meaning of Art. 123(3) EPC 1973.
The board in T 1052/01 took the view that deleting examples given in claim 1 as granted (here "valve, restrictor, etc.") for a generalised feature (here "hydraulic functional unit") did not extend the protection conferred, as these examples were embraced by the generalised feature which determined the extent of the protection conferred.
In T 579/01 the board held that in accordance with established case law the legal notion of "protection conferred" in Art. 123(3) EPC 1973 referred to the totality of protection established by the claims as granted and not necessarily to the scope of protection within the wording of each single claim as granted. Under Art. 123(3) EPC 1973, the patentee was generally allowed to redraft, amend or delete the features of some or all claims and was not bound to specific terms used in the claims as granted as long as the new wording of the claims did not extend the scope of protection conferred as a whole by the patent as granted (and did not violate the requirements under Art. 123(2) EPC 1973). Thus in the board's view in T 579/01, in order to assess any amendment under Art. 123(3) EPC 1973 after grant, it was necessary to decide whether or not the totality of the claims before amendment in comparison with the totality of the claims after amendment extended the protection conferred.
In the case in point, independent claim 1 and dependent claims 2 to 6 of the new main request were directed to a "vegetable plant", while the respective claims as granted were directed to a "cell in a vegetable plant". The board said that in the understanding of the skilled person the term "a cell of a plant", not being qualified as "isolated", included various physiological and morphological states of such a cell, including both differentiated and undifferentiated states. The cells in the different states in which they existed in a (developing) plant fell within the protection conferred by the claim to the "cell of a vegetable plant" as granted, and the protection conferred by such claim also extended to such cells in a plant. Furthermore, the biological notion "cells of a plant" encompassed such differentiated cells which were morphologically and functionally organised to constitute a plant. That implied that morphologically and functionally organised aggregates of plant cells, e.g. plants, likewise fell within the protection conferred by the granted claim to "a cell of a plant".
The board also decided that any plant as subject-matter of claim 1 of the new main request fell within the protection conferred by a claim to "a cell of a plant", and finally that the "plant" now claimed was characterised by the same genetic features as recited in the granted claim to "a cell of a plant". Also taking account of legislative developments in Europe in respect of the legal protection of biotechnological inventions (i.e. Articles 8.1 and 9 of Directive 98/44/EC), the board concluded that the amendment of the "cell of a plant" claim to a "plant" claim was not contrary to the requirements of Art. 123(3) EPC 1973.
In T 142/05 the board found that, even where the wording of the granted claims was unamended and clear, the mere deletion from the description of an important desired property of the patented subject matter led to an extension of the scope of protection which contravened Art. 123(3) EPC 1973. In the case at issue, the following sentence was deleted during the opposition proceedings from the description in the text as granted: "Such a fuel hose shows a heat resistance of up to ca. 160°." The wording of the claims corresponded to the text as granted. The question arose whether, although the wording of the granted claims remained unchanged, the mere fact of deleting the above sentence from the description could extend the protection conferred by the patent and lead to a violation of Art. 123(3) EPC 1973. Construed literally, this provision could be taken to mean that amendments to the description were not affected by this restriction, since only the patent claims were mentioned. The board concluded that, although the claims were the most important element in determining the extent of protection, the wording of the claims should not be seen as the sole relevant factor; instead, the description and drawings were to be used in interpreting the claims. From this, it followed that even if the wording of a claim was clear and unambiguous, i.e. where the scope of its literal meaning was clear, reference was still to be made to the description and claims. This could lead to a different interpretation of the claim, diverging from that obtained by considering only its literal meaning. Amendments to the description and drawings could modify the content of the claims and thereby extend the scope of protection according to Art. 69(1) EPC 1973, even where the wording of the claims was clear and remained unamended. In the board's view, the deletion of the sentence at issue clearly led to an extension of the scope of protection. The deletion had the effect of generalising the teaching of the patent, since without this information the extent of the heat resistance shown by the patented hose remained open. Art. 123(3) EPC 1973 had therefore been contravened.