T 1121/17 - Broadening claims before grant

 Key points

• The Board recalls that the prohibition of broadening the scope of the claims applies only after grant, in this examination appeal.
• Article 123(2) EPC reads: “may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed” but this does not refer to the scope of the claims of the application as filed.
• In this case, the Examining Division had cited the Guidelines (now H-IV 3.4) "Therefore in a claim directed to such an openly defined composition, the restriction of the breadth of a component present therein may have the effect of broadening the scope of protection of that claim, with the consequence that in opposition/appeal proceedings such amended claim may extend the protection conferred by the granted patent (Art. 123(3))”, however, conveniently changing the part in italics into “with the consequence that such amended claim contains subject-matter which extends beyond the content of the application as originally filed, contrary to the requirements of Article 123(2) EPC.”
• I suppose we can only speculate what the Examiner was thinking.
• In any case, the Board allows the appeal and also examines Art. 84 and Art. 83, finding that the amended claims overcome those grounds for refusal.
• The Board remits the case. “no search report was established for the present application. Instead, the EPO, acting as International Search Authority under the PCT, issued a "Declaration of non-establishment of International Search Report" under Article 17(2)(a) PCT for reasons including those which eventually led to the refusal of the application. The declaration indicated that a search may be carried out during examination before the EPO should the problems which led thereto be overcome.”
• “Upon remittal, the examining division may have to carry out a search, as indicated in this declaration under Article 17(2)(a) PCT.”
• The application was filed in 2012. 
• Broadening claim amendments can sometimes be held inadmissible under Rule 137(3) when filed after the Rule 161 response or after the Rule 70a response, as the case may be. Broadening claim amendments may also be unallowable under Rule 137(5)  second sentence if the claims are not searched by the EPO under Rule 63 (not sure how this works for Euro-PCT applications and cases wherein the Board indicates an additional search by the examining division) . 

https://www.epo.org/law-practice/case-law-appeals/recent/t171121eu1.html

Decision text omitted.