Résumé de EPC2000 Art 123(3) pour la décision T0953/22 du 19.09.2023

In T 953/22 the board noted that the wording of Art. 123(3) EPC was not identical to the wording of Art. 123(3) EPC 1973, which read: "The claims of the European patent may not be amended during opposition proceedings in such a way as to extend the protection conferred." (emphasis added by the board). However, the case law on Art. 123(3) EPC 1973 made it clear that the extent of protection under Art. 69 EPC 1973 and the Protocol on its Interpretation was determined by the wording of the claims, taking into account the description and drawings, and that amendments to the description and drawings may therefore also extend the protection under Art. 69(1) EPC 1973 (see e.g. G 2/88, point 4 of the Reasons; G 1/93, point 11 of the Reasons; T 1149/97 and T 142/05). For this reason, the basic principles analysed in the case law on Art. 123(3) EPC 1973 were applicable to Art. 123(3) EPC as well. In T 142/05, the board held that amendments to the description and drawings could modify the content of the claims and possibly extend the scope of protection under Art. 69(1) EPC 1973, even where the wording of the claims was clear and remained unamended. In auxiliary request 1 ("AR 1") of the case in hand, claim 1 and the description remained unamended. The description disclosed that the length of the overlay welds was shown as L2 in Figure 4 ("Fig. 4"). However, Fig. 4 of AR 1 differed from Fig. 4 of the patent as granted. In Fig. 4 of the patent as granted, length L2 of the overlay welds was depicted as extending on only one side of the girth weld. In contrast, in Fig. 4 of AR 1, length L2 of the overlay welds was depicted as the total length of the overlay welds on both sides of the girth weld. Using Fig. 4 of the patent as granted, an arrangement with a total length of the overlay welds of 160 mm, i.e. 80 mm on either side of the girth weld, was not within the extent of the protection conferred. However, in view of amended Fig. 4, the same arrangement lay within the extent of the protection conferred according to AR 1. Considering amended Fig. 4, the board established that the protection conferred by the patent as amended according to AR 1 was extended (Art. 123(3) EPC; G 2/88, point 4.1 of the Reasons). The board was not convinced by the counter-arguments of the appellant. Firstly, the appellant submitted that the skilled person knew that Fig. 4 of AR 1 was wrong, so they would not use this figure to interpret the claims. However, the board explained that the skilled person would not immediately recognise amended Fig. 4 as incorrect. Secondly, by referring inter alia to T 1473/19, the appellant argued that a discrepancy between the claims and the description was not a valid reason to ignore the clear linguistic structure of a claim and to interpret it differently or to give a different meaning to a claim feature which in itself imparted a clear credible technical teaching to the skilled reader. The board explained that the description and drawings were also taken into account for the purposes of Art. 123(3) EPC if the claims were clear and unambiguous. They were not only consulted to fill gaps. The statement that "limiting features which are only present in the description but not in the claim cannot be read into a patent claim" (T 1473/19) was not fully applicable to the case in hand. Citing Art. 1 of the Protocol on the Interpretation of Article 69 EPC and G 2/88 (point 4 of the Reasons), the board, while also recognising the primacy of the claims under Art. 69(1) EPC, explained that it would not in the case in hand go so far as to say that the disclosure of the description and the figures could not be read into the patent claim. The board also relied on G 1/93 (point 11 of the Reasons), according to which: "In principle, it does not matter whether the addition concerns the claims, the description or the drawings, since the protection conferred by the patent has to be determined by all these elements in accordance with Art. 69 EPC and the Protocol on the interpretation of this provision. However, the claims are no doubt the most important element in this respect." Further, the facts in T 1473/19 were different. In T 1473/19 the objection under Art. 123(3) EPC was raised against a request with amended claims, whereas in the present case the amendment was only to one of the figures of the patent as granted. The features of claim 1 as granted did not define how the length of the overlay welds was to be understood. It was only by using the description and the drawings, in particular Fig. 4 as granted (or as amended in AR 1), that the extent of protection could be determined. Fig. 4 as granted (or as amended in AR 1) was thus not used to read limiting features into claim 1 that were not present in this claim but to determine the extent of the protection conferred.