T 2475/18 - Art. 123(3) and Art. 69

Key points

• The OD found the main request to violate Art. 123(3) (machine translation): " According to the opposition division and the respondent (opponent), the wording as granted requires that the receiving device locks in place and then cannot be rotated back, but can still be rotated in the other direction []. However, claim 1 of the main request also includes embodiments in which, once it has been locked, it is no longer possible to rotate the receiving device at all."  
• The Board, in machine translation: The Board disagrees. According to G2/88, the first step in examining Article 123(3) EPC is to determine the scope of protection of the patent under Article 69(1) EPC before amendment. Accordingly, established case law of the EPO Board of Appeal (see [CLBA 9th ed.] II.A.6.2) emphasizes that Article 69(1) EPC relates to the scope of protection of the patent which, with regard to Article 123(3) EPC is relevant. This in turn means that - contrary to the opinion of the respondent (opponent) - the description and the figures are to be used to interpret the granted patent claims. Since the examination of Article 123(3) EPC is therefore a matter of interpreting the scope of protection and not, as in T 0030/17 mentioned by the respondent, of determining the claimed subject-matter, contrary to the respondent's view, no contradiction arises other decisions of the Boards of Appeal.
• Turning to the facts of the case: " If feature 1.9 is now read in conjunction with feature 1.6, the granted claim in the light of the description - just like the claim wording of the main request - leaves open whether the receiving device can be rotated further after locking (feature 1.8) in one direction of rotation or not." 
• " Consequently, both embodiments which now fall under the wording of claim 1 of the main request, i.e. a receiving device which can still be rotated in one direction of rotation after locking or a receiving device which is completely blocked after locking, were already included within the scope of protection of the granted claim." 
• G 2/88, in what could be the relevant part of the reasons, provides:  "When considering whether a proposed amendment to the claims is such as to extend the protection conferred, a first step must be to determine the extent of protection which is conferred by the patent before the amendment: it is necessary to be quite clear as to what is the protection conferred by the patent without amendment, before one can decide whether a proposed amendment is such as to extend it. Determination of the extent of protection has to be carried out in accordance with Article 69(1) EPC and its Protocol, which provides a guide to the manner in which the technical features of the claim are to be interpreted. " 

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/law-practice/case-law-appeals/recent/t182475du1.html