T 0459/09 du 13.12.2012

I. An amendment consisting of the incorporation of a technically meaningful feature in an independent claim of a granted patent does indeed represent an attempt to overcome an objection within the framework of Article 100 EPC against the patent as granted, the amendment having to be occasioned by a ground for opposition (Rule 80 EPC). It follows that such an amendment is of a substantial nature and will normally have an effect on the substantive examination, such as for example on the assessment of novelty and inventive step.

II. Any amendment that can be qualified as being of a substantial nature in the above sense would in principle justify an unrestricted exercise of the examination power derivable from Article 101(3) EPC, irrespective of the kind of amendment performed. Specifically, it is immaterial whether the amendment arises from the combination of a feature from the description with an independent claim, or from the literal combination of claims of the granted patent.

III. The amended patent would thus normally be examined pursuant to Article 101(3) EPC so as to establish whether it meets all the requirements of the EPC. A deviation from this rule may, however, not be excluded in particular cases. This has to be judged on a case-by-case basis (see Reasons, 4.1.7).