T 0231/89 (Flat torsion spring) of 14.06.1991

I. It would be unjustified to declare a patent invalid on the grounds of Article 100(c) EPC for the reason alone that an amendment introducing a limiting feature during prosecution with the approval or recommendation of the Office extended the subject-matter of the patent beyond the content of the application whilst the removal of the same feature is, on the other hand, to be prevented under Article 123(3) EPC. In such cases a reasonable and balanced interpretation of the two paragraphs 2 and 3 of Article 123 EPC is necessary. As long as such scope-limiting feature in a claim is meaningful but immaterial in respect of the novelty and inventive step of the claimed subject-matter, Article 123(3) EPC is to be regarded as dominant over Article 123(2) EPC and the feature may therefore remain in the claim notwithstanding its character of added matter (cf. point 3.1 of the Reasons).

II. On the other hand, the extent of protection determined by a claim having a specific feature without technical meaning is independent of such a feature and of its deletion, i.e. the same can be deleted without contravention of Article 123(3) EPC (cf. point 3.5 of the Reasons).