T 0250/05 (Use of nitric oxide for systemic treatment/THE BRIGHAM AND WOMEN'S HOSPITAL, INC.) vom 04.03.2008

1. When following the principles set out in Enlarged Board of Appeal decision G 0001/93 for dealing with the "conflicting requirements of Article 123, paragraphs 2 and 3 EPC" in an amended set of claims, it has to be investigated whether the patent as granted contains subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC, which also limits the scope of protection conferred by the patent, and which directly affects the assessment of the amended claims in respect of the requirements of Article 123(2) and (3) EPC (points 2.1 to 2.5 of the reasons for the decision).

2. Apart form the fact that Article 54(5) EPC 2000 (entry into force 13 December 2007) does not apply to a patent granted in 2001, Article 123(3) EPC would not allow the change of category of a granted use claim into a product claim, even if drafted as a purpose-related product claim. (points 3.4 to 3.6 of the reasons for the decision).