2.1.2 Cut-off point

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, cut­off 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. The findings in T 1149/97 are, for example, summarised in T 1481/05. The outcome in T 1481/05 is different since the facts were substantially different from T 1149/97.

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 of the Reasons). 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.

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