2.4.12 Replacement of substance by device containing substance or substance with mechanical device

In T 352/04, claim 1 as granted had been directed to a hair-care composition defined only by its components, whereas claim 1 of the main request pending on appeal included a variant that additionally characterised it as "present in the form of a non-aerosol hairspray with a mechanical spray device". Observing that the dependent claims as granted had similarly made no reference to any device features, the board held that the addition of this mechanical spray device extended the protection conferred in breach of Art. 123(3) EPC 1973. Its inclusion as a separate element also changed the category of the claim, as it now encompassed a device containing the cosmetic composition too. See also in this chapter II.E.2.6. "Change of claim category".

In T 1898/07 the appellant (patent proprietor) argued that a claim referring to a packaged kit containing the liquid composition of claim 1 as granted was in fact narrower in scope than a claim referring to the liquid composition, as this claim encompassed the liquid formulation in any possible container, vessel, package or reservoir. The board agreed with the appellant in so far as the scope of protection covered by a claim referring to a physical entity should be considered to encompass the physical entity in any possible package or container. However, it was self-evident that "a packaged kit" was a different physical entity than "a liquid composition". In the board's view the content of a package is not a characterising feature of the package per se. Thus, a procedural situation was created where an act, for instance the production of the box, package or other container, which did not infringe the patent as granted, became an infringing act as a result of an amendment after grant. It is precisely this situation which should be prevented by the requirements of Art. 123(3) EPC. A referral under Art. 112(1)(a) EPC was not justified since the board, which examined the teaching of cases T 579/01 and T 352/04 (amendment from cosmetic agent to combination of the agent with a mechanical device) referred to by the appellant, concluded that they did not apply in this case.

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