Abstract on Article 123(3) EPC for the decision T0847/24 of 25.03.2026

In T 847/24 the granted claim 1 defined a computer-implemented method for configuring a physical object (an implant) which, when carried out, merely resulted in data representing that object. Claim 1 of auxiliary request 1 differed from claim 1 as granted in that, inter alia, the claimed method further included the production of the configured object. The board held that the amended claim, including the step of manufacturing the configured object, was, in view of Art. 64(2) EPC, not allowable under Art. 123(3) EPC.

Regarding claim interpretation, the board referred to the Enlarged Board's statement in G 1/24 that the departments of the EPO, in the course of their duties, are required to interpret patent claims when assessing the patentability of an invention, and pointed out that determining a patent claim's subject-matter was not distinguishable from interpreting that claim and its features. The terms in a patent claim had to be interpreted in a uniform, consistent and objective manner. It followed that the same claim interpretation step which, in accordance with G 1/24, had to be carried out when assessing e.g. novelty had also, for reasons of consistency, to be carried out when e.g. assessing added subject-matter, sufficiency of disclosure or extension of protection. The board disagreed with decisions T 1791/16 and T 837/24, which dealt with cases in which the claims in question allowed for several technically meaningful interpretations and in which the deciding boards had considered that all these interpretations had to meet the requirements of Art. 123(2) and Art. 123(3) EPC respectively. According to the board, the requirement "to interpret patent claims" pursuant to G 1/24 implied that the correct interpretation of a claim could not – if decisive for the outcome – be left open.

When assessing whether claim 1 of auxiliary request 1 (which included the step of manufacturing the configured implant) extended the scope of protection, the board considered, in view of the wording of Art. 123(3) and Art. 64(2) EPC and the Enlarged Board's statement in G 2/88 (point 5.1 of the Reasons), that assessing a possible extension of a patent's scope of protection under Art. 123(3) EPC had to include possible changes of the scope of protection due to Art. 64(2) EPC (see e.g. T 1635/09).

The parties did not dispute, and the board agreed, that claim 1 of auxiliary request 1, which explicitly included a step of producing the implant, conferred protection not only to the claimed method but also, pursuant to Art. 64(2) EPC, to a physical implant produced in accordance with that method. It was also not in dispute that a method comprising all the steps of claim 1 as granted and, in addition, a production step also fell within the scope of claim 1 as granted, because the added step merely limited the method defined in claim 1 as granted. For this reason, the addition of a production step to claim 1 as granted did not extend the protection conferred to a method that would not have been protected by the patent as granted.

What was controversial, however, was whether the physical implant directly obtained by the more limited method according to claim 1 of auxiliary request 1 had been protected by claim 1 as granted. The board pointed out that Art. 64(2) EPC required that the product in question be "directly" obtained by the claimed method, which meant that the protection conferred by a process claim did not, as a rule, extend to products obtained only by carrying out further steps which were neither defined in that claim nor implied by it. According to the board, what was directly obtained when carrying out the claimed method was merely data. Having regard to the purpose of Art. 64(2) EPC, a physical medium storing that data could still be considered to fall within its scope. However, using the data obtained by carrying out the defined method when manufacturing a physical implant was an entirely different matter. A physical implant was, in terms of its characteristics, far removed from mere data configuring that implant. Therefore, a physical implant was not "directly" obtained, within the meaning of Art. 64(2) EPC, by the method defined in claim 1 as granted. In the board's view, the appellant's position was not supported by the fact that the patent specification (which had, for the purposes of assessing the extent of protection, to be used to interpret the claims in direct application of Art. 69(1) EPC) stated that an implant "may be produced based on the defined structure" determined in accordance with the method defined in claim 1 as granted. This indicated the opposite, namely that the production of the implant was optional and not a constituent or defining feature of the claimed method.