1.14.2 Impact on the claimed subject-matter

The board in T 835/11 held (in relation to a divisional application) that an amendment to the description could result in an inadmissible extension only if it changed the subject-matter. That might be the case, for instance, if the description initially defined a feature in the claims more narrowly than its usual meaning; deleting the definition from the description could then result in an inadmissible extension of the patent's subject-matter. Removing or adding examples might also affect how the claims were understood and so also change the patent's subject-matter (see e.g. T 1239/03 and T 1227/10, in chapter II.E.1.14.4 below). The boards had also repeatedly held that reformulating the problem to be solved could inadmissibly extend the patent's subject-matter (see e.g. T 13/84, OJ 1986, 253, in chapter II.E.1.14.6). By contrast amendments to the description which had no effect on the claimed subject-matter were not open to objection. In the case in hand, Art. 100(c) EPC had not been infringed.

In T 1382/24 the board explained that in T 938/20, concerning a first appeal, the present board in a different composition decided that claim 1 met the requirements of Art. 123(2) EPC. In particular, it found that the feature labelled 1.3b was directly and unambiguously derivable from the application as filed. That feature labelled 1.3b was present in the description in T 1382/24. The board held that, since it had been decided that it was allowable under Art. 123(2) EPC in the claim, its introduction in paragraph [0040] of the patent in suit, which did not alter its meaning compared to its presence in the claim, could not be considered as offending Art. 123(2) EPC.