T 0970/17 - Amending to the larger thing

 Key points

•  "claim 1 as granted was directed to a septum [;] claim 1 of the third auxiliary request is directed to a vascular access port comprising the septum according to claim 1 as granted" 
• The opponent argues that this violates Article 123(3) EPC. The argument is basically that more might infringe  "under German patent law with regard to contributory infringement". I assume that amended claim 1 is directed to a vascular access port comprising the septum and a housing (casing) and that the argument is that possibly now selling the housing alone, would be contributory infringement to amended claim 1 (under Article 64(3) EPC and Section 10 (1) PatG).
• The Board does not buy it. “Claim 1 of the third auxiliary request includes all the features of claim 1 as granted, as well as several additional technical features. Both claims are product claims. It follows that claim 1 of the third auxiliary request has a narrower scope of protection than claim 1 as granted (see G 2/88, Reasons 4.1).”
• “In any case, the scope of protection of claim 1 as granted, which is directed to a septum, is broader than that of claim 1 of the third auxiliary request, which is directed to a vascular access port comprising the septum according to claim 1 as granted.” 
• “The opponent's arguments relating to possible differences under German patent law with regard to contributory infringement do not change the above assessment. There is a difference between the "extent of the protection conferred" by a patent under Article 69 EPC and the "rights conferred" by a patent under Article 64 EPC. The latter depend on the rights conferred by a national patent in the relevant contracting state and do not need to be considered for the purposes of Article 123(3) EPC. Accordingly, the national laws of contracting states in relation to infringement are not to be taken into account under Article 123(3) EPC either (G 2/88, Reasons 3.3).”
• See also recent decision T 1832/17 of a different Board finding the same. 
• Note that the effect of Art. 64(2) EPC is to be taken into account under Article 123(3), see G 2/88, r.5.1 and e.g. T 1471/14.

T 0970/17 - link after the jump

https://www.epo.org/law-practice/case-law-appeals/recent/t170970eu1.html

6.2 Claim 1 - extension of scope of protection; request for referral to the Enlarged Board of Appeal

6.2.1 Extension of scope of protection

Under Article 69 EPC and the Protocol on its interpretation, the extent of the protection conferred by a European patent is determined by the claims,

which must be interpreted with the help of the description and the drawings. In the case in hand, it is disputed whether claim 1 of the third auxiliary request confers a broader scope of protection than claim 1 as granted. Neither party has relied on the description or the drawings.

The scope of protection conferred by a patent claim depends in particular on its category and the technical features it includes (G 2/88, Reasons 3.3). Claim 1 of the third auxiliary request includes all the features of claim 1 as granted, as well as several additional technical features. Both claims are product claims. It follows that claim 1 of the third auxiliary request has a narrower scope of protection than claim 1 as granted (see G 2/88, Reasons 4.1).

In this context, it does not matter that claim 1 as granted was directed to a septum whereas claim 1 of the third auxiliary request is directed to a vascular access port comprising the septum according to claim 1 as granted.

The opponent argued that it would not be allowable under Article 123(3) EPC to claim a physical entity which is different from the physical entity claimed in the patent as granted. In the context of the case in hand, the opponent's arguments also amount to saying that, in a product claim, the entity claimed is defined by the first technical feature of the claim.

Under Article 123(3) EPC, however, what matters is not what the first technical feature in a claim is, but rather which technical features the claims include in their totality. In other words, the scope of protection is not necessarily different depending on whether a septum in combination with a vascular access port is claimed or a vascular access port comprising a septum. In any case, the scope of protection of claim 1 as granted, which is directed to a septum, is broader than that of claim 1 of the third auxiliary request, which is directed to a vascular access port comprising the septum according to claim 1 as granted.

The opponent's arguments relating to possible differences under German patent law with regard to contributory infringement do not change the above assessment. There is a difference between the "extent of the protection conferred" by a patent under Article 69 EPC and the "rights conferred" by a patent under Article 64 EPC. The latter depend on the rights conferred by a national patent in the relevant contracting state and do not need to be considered for the purposes of Article 123(3) EPC. Accordingly, the national laws of contracting states in relation to infringement are not to be taken into account under Article 123(3) EPC either (G 2/88, Reasons 3.3).

The board is also not convinced by the opponent's argument that dependent claim 2 as granted, which was already directed to a septum in an access port, comprised additional technical features in comparison with claim 1 of the third auxiliary request. Under Article 123(3) EPC, the patent proprietor does not have to amend claim 1 as granted so as to include all the technical features of dependent claim 2 as granted. What matters under Article 123(3) EPC is merely whether an amendment results in an extension of the scope of protection, taking into account the totality of the claims. As stated above, claim 1 of the third auxiliary request has a narrower scope of protection than claim 1 as granted.