3.1 Replacement or removal of features from a claim 

The requirements of Art. 123(2) are only met if the replacement or removal of a feature lies within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge and seen objectively and relative to the date of filing (or the date of priority according to Art. 89), from the whole of the application documents (G 3/89, G 11/91 and G 2/10).

If the amendment by replacing or removing a feature from a claim fails to pass the following test by at least one criterion, it necessarily contravenes the requirements of Art. 123(2):

(i)the replaced or removed feature was not explained as essential in the originally filed disclosure; 

(ii)the skilled person would directly and unambiguously recognise that the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve (in this context special care needs to be taken in cases where the technical problem is reformulated during the proceedings, see H‑V, 2.4 and G‑VII, 11); and

(iii)the skilled person would recognise that the replacement or removal requires no modification of one or more features to compensate for the change (it does not in itself alter the invention). 

However, even if the above criteria are met, the division must still ensure that the amendment by replacing or removing a feature from a claim satisfies the requirements of Art. 123(2) as they also have been set out in G 3/89 and G 11/91, referred to in G 2/10 as "the gold standard".

If several features are deleted from an independent claim, so that for example it is restricted to only part of the originally claimed subject-matter, the subject-matter of the amended claim must be directly and unambiguously derivable from the application as filed as being an invention per se, i.e. it must solve a technical problem and be able to work in the absence of any of the particular features being deleted.

The removal of a limiting feature from an independent granted claim is likely to result in broadening the scope of protection afforded and could therefore contravene Art. 123(3). Likewise, if a feature in a granted claim is replaced, compliance with Art. 123(3) has to be carefully checked.