2.6.5 From use claim to process claim, and vice versa

In T 279/93 the board found that a claim to the use of a compound A in a process for preparing compound B had no broader scope than a claim to a process for preparing compound B from compound A. It had already been stated in G 2/88 (point 2.5 of the Reasons) that the technical features of a claim to an activity were the physical steps which defined such activity. In this case, the board considered that process claim 1 as filed, process claim 1 as granted and use claim 1 filed on appeal all related to the same physical steps, and that the claims were therefore of the same scope. On this view, the scope of protection conferred by this use claim was not broader than that conferred by the granted process claim (see also T 619/88).

In T 420/86 a change from a claim for a process for treating soil, in which X was used, to a claim for the use of X for treating soil was allowed. In T 98/85 on the other hand, a change from a "process for the preparation of a ... composition" to the "use of this ... composition as a ..." was seen as a breach of Art. 123(3) EPC 1973.

In T 276/96 the board decided in view of G 5/83 (OJ 1985, 64) that the change of claim of the type "Method of fabricating item A using item B providing effect C" to a claim of the type "Use of item B in a method of fabricating item A to provide effect C" did not extend the protection conferred, since with both formulations the same activity would be forbidden to competitors.

In T 22/09 of 5 February 2016 the board held that since claim 1 as granted concerned a method of pre-treating a catalyst support, which by virtue of Art. 64(2) EPC extended the protection conferred to the pre-treated catalyst support directly obtained by the claimed method, and since instead claim 1 according to the new request concerned the use of a modifying component for suppressing the solubility of a catalyst support, i.e. defined the use of a chemical compound to obtain a particular effect on the catalyst support, the protection conferred by the patent as granted had not been extended.

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