2.1.3 Miscellaneous issues

Decision T 190/99 gives guidance on how to interpret a claim as granted for the purpose of Art. 123(3) EPC. The skilled person, when considering a claim, should rule out interpretations which are illogical or which do not make technical sense. He should try, with synthetical propensity, i.e. building up rather than tearing down, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent (Art. 69 EPC). The patent must be construed by a mind willing to understand, not a mind desirous of misunderstanding (this frequently cited decision was recently referred to, for example, in T 1084/10 and T 1190/11).

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 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 1898/07 concerning Art. 123(3) EPC, the board first summarised the object of this article in the light of the case law (points 19-20 of the Reasons). The appellant/patent proprietor argued that a claim referring to a packaged kit containing the liquid composition of claim 1 as granted was in fact narrower in scope than a claim referring to the liquid composition, as this claim encompassed the liquid formulation in any possible container, vessel, package or reservoir. The board agreed with the appellant in so far as the scope of protection covered by a claim referring to a physical entity should be considered to encompass the physical entity in any possible package or container. However, it was self-evident that "a packaged kit" was a different physical entity than "a liquid composition". It must not be overlooked that claim 1 of the main request is not directed to "a liquid composition contained in a packaged kit" but to "a packaged kit containing a syringe pre-filled with a liquid composition." In the board's view the content of a package is not a characterising feature of the package per se. Thus, a procedural situation was created where an act, for instance the production of the box, package or other container, which did not infringe the patent as granted, became an infringing act as a result of an amendment after grant. It is precisely this situation which should be prevented by the requirements of Art. 123(3) EPC. A referral under Art. 112(1)(a) EPC was not justified since the board, which examined the teaching of cases T 579/01 and T 352/04 referred to by the appellant, concluded that they did not apply in this case.

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 (decision cited in T 71/10).

In T 2017/07, the board stated that a composition which is specified in a claim to comprise a component in an amount which is defined by a numerical range of values is characterised by the feature which requires the presence of the component within that range, as well as by the implicit proviso which excludes the presence of that component in an amount outside of that range. Consequently, the amount of that component present in the composition must not exceed the upper limit of the numerical range indicated. An amendment restricting the breadth of that component, for instance by narrowing down a generic class or a list of chemical compounds defining that component, has the consequence of no longer requiring the presence within that numerical range of those chemical compounds no longer encompassed by the restricted definition of that component and, thus, of limiting the scope of this implicit proviso. A composition which is defined as comprising the components indicated in the claim is open to the presence of any further components, unless otherwise specified. Thus, in a claim directed to an openly defined composition, the restriction of the breadth of a component present therein may have the effect of broadening the scope of protection of that claim, with the consequence that in opposition/appeal proceedings such amended claim may extend the protection conferred by the granted patent (Art. 123(3) EPC).

T 2017/07 was quoted in the more recent case T 1544/07. The board in this case noted that in order to determine the extension of protection conferred by a patent, all claims as granted have to be considered and not just any one particular claim (cf. T 49/89). Applying the principle that the protection conferred by a product claim covers any process for its preparation to the specific case of T 1544/07, the board came to the conclusion that Art. 123(3) EPC was satisfied.

The findings in T 2017/07 are, for example, summarised as follows in T 9/10: The use of the term "comprising" in connection with a numerical range defining the amount of a component implicitly means that the protection conferred by the claim does not extend to compositions containing that component in amounts outside the defined range (see the headnote of T 2017/07).

Sequential drafting in an open claim ("comprising"), i.e. retaining in an amended claim the broad definition of claim 1 and adding, by means of the expression " and in which ...", an additional limitation, avoids the situation contemplated in T 2017/07, where an amendment initially made with a view to limiting a claim in fact extended the scope of protection it conferred (Art. 123(3) EPC) (T 999/10, headnote and point 3 of the Reasons).

In T 260/10, the feature "having at least one optical display unit and in particular at least one operating unit ..." in claim 1 as granted had been replaced and the words "and in particular at least one operating unit" thereby deleted. The board found that it generally depended on the specific context whether a feature following the expression "in particular" had to be regarded as optional. As a rule, an optional feature in the main claim was one which was not essential to the claimed teaching but instead served as an example illustrating other features. The wording used in claim 1 as granted meant that the claimed domestic appliance included not only an optical display unit but also an operating unit, the expression "in particular" having to be construed in the sense of "above all" or "especially". The operating unit was specified not as an example of a possible component, but rather as an essential part of the domestic appliance. In this case, "in particular" gave special emphasis to the operating unit as part of the appliance. The scope of protection was limited by this non-optional feature and its deletion therefore infringed Art. 123(3) EPC (cited in T 916/08).

In T 532/08, the board held that, in this case, the disclaimer could only be omitted without extending the scope of protection if it was beyond doubt that the components identified by trade names did not comprise any of the claimed tensides. However, it could not be unequivocally established what was excluded by a disclaimer referring to trade names.

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