T 1830/14 - From method claim to device claim

Key points

• In this opposition appeal, the patentee wishes to delete a feature from claim 1 as granted, which claim 1 is directed to a cooling apparatus. The patentee argues that the patent also includes a claim 9 for a method of cooling a circuit board using a cooling apparatus which did not recite the features at issue. The question is whether the amendment (deleting features in claim 1) complies with Article 123(3) EPC. 
• The patentee invokes GL (2018) H-V,7.3) which states that: "...it may exceptionally be allowable to replace a claim directed to a method of operating a device by a claim directed to the device itself if the original claim contains the claimed features of the device exhaustively, whether in structural or functional terms (see T 378/86 and T 426/89)". As a comment, this remark in the GL has never made sense to me, other than that the EPO feels bound by those two old Board decisions.
• The Board recalls that: "It is generally established that a claim directed to an apparatus provides absolute protection of the defined apparatus and, hence, its scope of protection is broader than the scope defined by a claim directed to a method of production or use of the same apparatus." 
• " In the present case, claim 9 as granted comprises features defining the cooling apparatus as the appellant pointed out ("device features") but it also comprises features defining its operation ("method features")". 
  "The board is thus of the opinion that the protection conferred by granted claim 9 to the defined cooling apparatus is limited only to the apparatus when it is transferring heat according to the two features cited above, i.e. only when it is in operation." 
• "Claim 1 according to the Main Request defines the same cooling apparatus as granted claim 9, but confers absolute protection to it, irrespectively of whether it is in operation or not. Hence, its scope of protection is broader than that of granted claim 9." 
• The Board also points to T 82/93 as limiting the purported exception in the GL.
• As a comment, I (still) can not see at all how you can amend a method claim into a device claim without violating Article 123(3) EPC. The remark in the GL (and the two T decisions) seem incorrect to me (under the current very strict interpretation of Article 123(3) EPC). 

EPO T 1830/14 -  link

2. Main Request

2.1 Compared to the cooling apparatus defined in claim 1 as granted, in the apparatus claim 1 of the Main Request the feature "wherein opposing ends of the pulsating heat pipe (14) are coupled to the chassis housing (13)" (see lines 12 and 13 in column 13 of the patent specification) has been deleted.

Despite the fact that there are additional features of the cooling apparatus in claim 1 of the Main Request when compared to granted claim 1 (such as a loop heat pipe), the deletion of the above-mentioned feature caused an extension of the claimed scope of protection, since apparatuses without the deleted feature would now fall within the claimed scope although they did not fall within the scope of protection of the granted claims. This extension of protection is also confirmed by the fact that the cooling apparatus according to claim 1 of the Main Request (i.e. after the amendment) is outside the scope of granted claim 1 (i.e. before the amendment), since it does not comprise the deleted feature (see G 2/88, OJ EPO 1990, 93, point 4.1 of the reasons).

2.2 The appellant argued that the scope of protection should be defined by the claims as a whole and compliance with Article 123(3) EPC should be assessed by comparing the whole scope of protection after the amendment with the scope of protection of the granted patent claims as a whole and not by comparing the scopes of individual claims.

The appellant pointed to the granted (independent) method claim 9, which defined a method for cooling at least one printed circuit board. According to the appellant, this claim defined a cooling apparatus without the deleted feature and, therefore, deleting this feature from the apparatus claim did not broaden the scope of protection.

The appellant argued further that claim 1 of the Main Request was to be regarded as a conversion of the granted method claim 9 to an apparatus claim. The appellant referred to a passage of the Guidelines for Examination at the EPO according to which "...it may exceptionally be allowable to replace a claim directed to a method of operating a device by a claim directed to the device itself if the original claim contains the claimed features of the device exhaustively, whether in structural or functional terms (see T 378/86 and T 426/89)" (see Guidelines for Examination at the EPO, November 2018, Part H V.7.3). Granted claim 9 defined a method of operation of the cooling apparatus and defined exhaustively all the structural features of the cooling apparatus; hence, a conversion of a method claim to an apparatus claim was not infringing Article 123(3) EPC (see the statement of grounds of appeal, paragraph bridging pages 10 and 11 and appellant's letter dated 6 May 2019, pages 3 and 4).

2.3 The board agrees with the appellant that the scope of protection mentioned in Article 123(3) EPC refers to the scope defined by the patent claims as a whole. In practice, this scope of protection is determined by the claim which defines the broadest scope of protection. It is generally established that a claim directed to an apparatus provides absolute protection of the defined apparatus and, hence, its scope of protection is broader than the scope defined by a claim directed to a method of production or use of the same apparatus.

2.3.1 The appellant pointed out that in the opposed patent, claim 9 was directed to a method for cooling at least one PCB, which was to be understood as a method for operating the cooling apparatus.

The board agrees. Referring back to the Guidelines for Examination, the board notes that the sentence following the passage cited by the appellant reads as follows: "This exception, however, does not apply if the device as now claimed is for its features no longer dependent on the circumstances of its operation whereas it depended on them under the terms of the prior method claim (see T 82/93)" (ibid.).

Decision T 82/93 offers a more detailed explanation:

"Thus in general terms, if a patent as granted only includes claims defining the operation of a device and therefore containing both 'device features' and 'method features', and the patent as proposed to be amended during opposition proceedings includes claims which only contain 'device features', the proposed amendment is not allowable having regard to Article 123(3) EPC, because the patent as granted confers protection upon the device only when it is in use so as to carry out the method, whereas the patent as proposed to be amended would confer protection upon the device whether or not it is in use, and would therefore confer additional protection compared to the patent as granted." (T 82/93, OJ EPO 1996, 274, point 2.5 of the reasons).

2.3.2 In the present case, claim 9 as granted comprises features defining the cooling apparatus as the appellant pointed out ("device features") but it also comprises features defining its operation ("method features"), more specifically:

- transferring heat from the printed circuit board (12) with the pulsating heat pipe (14); and
- transferring heat away from the printed circuit board (12) and out of the chassis housing (13) by movement of the heat through the pulsating heat pipe (14).

2.3.3 The board is thus of the opinion that the protection conferred by granted claim 9 to the defined cooling apparatus is limited only to the apparatus when it is transferring heat according to the two features cited above, i.e. only when it is in operation.

Claim 1 according to the Main Request defines the same cooling apparatus as granted claim 9, but confers absolute protection to it, irrespectively of whether it is in operation or not. Hence, its scope of protection is broader than that of granted claim 9.

2.3.4 The board concludes, therefore, that the Main Request does not fulfil the requirements of Article 123(3) EPC.