2.6. Change of claim category
Overview
2.6. Change of claim category
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In G 2/88 (OJ 1990, 93) the Enlarged Board stated that a change of category of granted claims in opposition proceedings was not open to objection under Art. 123(3) EPC 1973, if it did not result in extension of the protection conferred by the claims as a whole, when they were interpreted in accordance with Art. 69 EPC 1973 and its Protocol. In this context, the national laws of the contracting states relating to infringement should not be considered, for there was a clear distinction between the protection which was conferred and the rights which were conferred by a European patent. The protection conferred by a patent was determined by the terms of the claims (Art. 69(1) EPC 1973), and in particular by the categories of such claims and their technical features. In contrast, the rights conferred on the proprietor of a European patent (Art. 64(1) EPC 1973) were the legal rights which the law of a designated contracting state might confer upon the proprietor. In other words, in general terms, determination of the "extent of the protection conferred" by a patent was a determination of what was protected, in terms of category plus technical features; whereas the "rights conferred" by a patent were related to how such subject-matter was protected. When deciding upon the allowability of an amendment involving a change of category, the considerations were, in principle, the same as when deciding upon the allowability of any other proposed amendment under Art. 123(3) EPC 1973.
- Case law 2020
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In T 653/16 the appellant (opponent) took the view that changing the category of claim 1 as granted from one directed to a device (floatable harbour power supply) to a method claim for carrying out a work method (method for supplying external power to a ship in the harbour) using the device extended the scope of protection since the change encompassed an additional physical entity in the form of a ship. The board disagreed, noting that, when a claim category was changed, the scope of protection provided by the claim categories in the previous version of the patent had to be compared with that conferred by the new claim category introduced by the amendment. In the case in hand, the patent as granted had solely contained claims directed to a physical entity per se. The Enlarged Board of Appeal had acknowledged that it was a fundamental principle of the EPC that any patent which claimed a physical entity per se conferred absolute protection upon that entity, i.e. for all uses of the entity, whether known or unknown (G 2/88, OJ 1990, 93). Contrary to the appellant's opinion, the scope of protection conferred by the patent as amended in line with auxiliary request 2 did not extend to cover the ship since that request was no longer directed to physical entities – for want of any device claims – and thus could not confer protection on any entity.
- Case law 2019
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T 1830/14 concerned the conversion of a granted method claim to a device claim. The board recalled that a claim directed to an apparatus provided absolute protection of the defined apparatus and, hence, its scope of protection was broader than the scope defined by a claim directed to a method of production or use of the same apparatus. In the case at issue, compared to the cooling apparatus defined in claim 1 as granted, in the apparatus claim 1 of the main request a feature had been deleted. The appellant argued that granted independent method claim 9 defined a cooling apparatus without the deleted feature and that, therefore, deleting this feature from the apparatus claim did not broaden the scope of protection. However, referring to the principles stated in T 82/93 (OJ EPO 1996, 274), the board observed that in the case in hand two features defining the operation of the cooling apparatus in claim 9 as granted were missing from claim 1 of the main request. The protection conferred by granted claim 9 to the defined cooling apparatus was limited to the apparatus when it was transferring heat according to the missing features, i.e. only when it was in operation. Claim 1 at issue defined the same cooling apparatus as granted claim 9, but conferred absolute protection to it, irrespectively of whether it was in operation or not. Hence, its scope of protection was broader than that of granted claim 9 and the main request did not fulfil the requirements of Art. 123(3) EPC. The board accepted auxiliary request IV, as the apparatus claim also contained the features defining the operation of the apparatus.