2.2. Totality of claims

In accordance with the established case law of the boards of appeal, the legal notion "protection conferred" in Art. 123(3) EPC refers to the totality of protection established by the claims as granted and not necessarily to the scope of protection within the wording of each single claim as granted (T 579/01, T 1456/06, T 1544/07, see also T 49/89, T 402/89). According to G 2/88 (OJ 1990, 93), it is the totality of the claims before amendment in comparison with the totality of the claims after the proposed amendment that has to be considered.

Under Art. 123(3) EPC, the patentee is generally allowed to redraft, amend or delete the features of some or all claims and is not bound to specific terms used in the claims as granted as long as the new wording of the claims does not extend the scope of protection conferred as a whole by the patent as granted (and does not violate the requirements under Art. 123(2) EPC). Thus, in order to assess any amendment under Art. 123(3) EPC after grant, it is necessary to decide whether or not the totality of the claims before amendment in comparison with the totality of the claims after amendment extends the protection conferred (T 579/01, T 1898/07).

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