3.4. Change of claim category

In T 1766/13 the board held that, with respect to the case at issue, a product and a method for its manufacture were not "the same subject-matter" in the sense of G 1/05 date: 2007-06-28 and G 1/06. According to T 1765/13, the same was true for the use of a product and a method of fabricating it. See also T 1708/06.

In T 1780/12 the board held that the category of a claim and its technical features constituted its subject-matter and determined the protection conferred (see G 2/88, OJ 1990, 93). The claims in question were of different categories: Swiss-type claims were purpose-limited process claims (Use of X for the manufacture of a medicament for the treatment of Y) and claims formulated in accordance with Art. 54(5) EPC were purpose-limited product claims (X for use in the treatment of Y). As regards the technical features, the board concluded that both sets of claims defined the same compound and the same therapeutic use, but that the Swiss-type claims comprised in addition the feature of manufacturing a medicament whereas the claim in accordance with Art. 54(5) EPC did not. The claimed subject-matter was thus different. The board also considered that the scope of protection was noticeably different. It was generally accepted as a principle underlying the EPC that a claim to a particular physical activity (e.g. method, process, use) conferred less protection than a claim to the physical entity per se (see decision G 2/88). It followed that a purpose-limited process claim also conferred less protection than a purpose-limited product claim. See also T 879/12, T 13/14 and T 15/14 agreeing with the conclusions in T 1780/12.