2.4.9 Replacement of a restrictive term by a less restrictive term

In T 371/88 (OJ 1992, 157) the board held that Art. 123(3) EPC 1973 was not contravened if a restrictive term in a granted claim which in its strict literal sense did not embrace an embodiment set out in the description was replaced by a less restrictive term clearly embracing also this embodiment, provided two conditions were fulfilled: The restrictive term should not be so clear in its technical meaning in the given context that it could be used to determine the extent of protection without interpretation by reference to the description and drawings. Moreover, it had to be quite clear from the description and drawings and also from the examination procedure up to grant that the further embodiment belonged to the invention and that it was never intended to be excluded from the protection conferred by the patent (see also T 673/89 confirming T 371/88; T 738/95 distinguishing its case from T 371/88; T 750/02, which held that the first condition set out in T 371/88 was not fulfilled; T 749/03, which held that both conditions were met and which is summarised in chapter II.E.2.4.10 below).

In T 824/08 the board observed that the rationale of T 371/88 could not be applied in the case at issue since the limiting feature was clear in itself and did not pose any problems when determining the extent of protection conferred by the claim.

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