CLR II E 2.4.11 of substance by device containing substance

In T 1898/07 the appellant (patent proprietor) argued that a claim referring to a packaged kit containing the liquid composition of claim 1 as granted was in fact narrower in scope than a claim referring to the liquid composition, as this claim encompassed the liquid formulation in any possible container, vessel, package or reservoir. The board agreed with the appellant in so far as the scope of protection covered by a claim referring to a physical entity should be considered to encompass the physical entity in any possible package or container. However, it was self-evident that "a packaged kit" was a different physical entity than "a liquid composition". It must not be overlooked that claim 1 of the main request is not directed to "a liquid composition contained in a packaged kit" but to "a packaged kit containing a syringe pre-filled with a liquid composition." In the board's view the content of a package is not a characterising feature of the package per se. Thus, a procedural situation was created where an act, for instance the production of the box, package or other container, which did not infringe the patent as granted, became an infringing act as a result of an amendment after grant. It is precisely this situation which should be prevented by the requirements of Art. 123(3) EPC. A referral under Art. 112(1)(a) EPC was not justified since the board, which examined the teaching of cases T 579/01 and T 352/04 (amendment from cosmetic agent to agent including mechanical device) referred to by the appellant, concluded that they did not apply in this case.

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