Key points
- The opponent raises an objection under Art.100(c), arguing that the amended claims lack basis in the claims as granted.
- "The argumentation of the opponent, however, cannot be followed since it relies on a discussion of the basis in the granted claims which is not relevant in the present case as the granted claims do not correspond to the claims as filed."
- The Board uses the opportunity to summarize the requirements of Art. 123(2): "The "gold standard" (G 2/10 []) for assessing compliance with Article 123(2) EPC is the following: any amendment to the parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in Article 123(2) EPC and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive
- directly and unambiguously,
- using [his/her/their] common general knowledge,
- and seen objectively and relative to the date of filing,
- from the whole of these documents [i.e. the description, claims and drawings] as filed"
- I'm not 100% sure if all national courts (and UPC divisions) will consider the basis in the patent as granted to be irrelevant, though the EPC is quite clear about it.
EPO
The link to the decision is provided after the jump.
T1149/97 held that (summary in CLBA): " If, in view of Art. 84 and Art. 69 EPC 1973, the application documents were adapted to amended claims before grant, thereby deleting part of the subject-matter originally disclosed in order to avoid inconsistencies in the patent specification, as a rule subject-matter deleted for this reason could not be reinserted either into the patent specification or into the claims as granted without infringing Art. 123(3) EPC 1973. An analogous finding applied to subject-matter retained in the patent specification during such adaptation for reasons of comprehensibility, but indicated as not relating to the claimed invention." The decision is controversial, see the comments in the CLBA.
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