GL H V 7.4 Method claim to use claim

The change from a process for the preparation of a product to the use of the product for a purpose other than previously claimed is not allowable (see T 98/85 and T 194/85).

On the other hand, the change in a claim from a method in which a certain product is used to a claim to the use of that product in performing that same method is allowable (see T 332/94).

GL H V 7.3 Method claim to product claim

In general, a change in claim category from a method in which an apparatus is used to the apparatus itself is not allowable (see T 86/90).

However, it may exceptionally be allowable to replace a claim directed to a method of operating a device by a claim directed to the device itself if the original claim contains the claimed features of the device exhaustively, whether in structural or functional terms (see T 378/86 and T 426/89

GL H V 7.2 Product claim to method claim

If a patent is so amended that a claim to a product is replaced by a claim to a method for producing the product, this change of category is allowable, provided that the method now claimed only results in the product previously claimed.

GL H V 7.1 Product claim to use claim

If a patent is so amended that a claim to a product (a physical entity) is replaced by a claim to the use of this product, the degree of protection is not extended, provided that the use claim in reality defines the use of a particular physical entity to achieve an effect and does not define such a use to produce a product (see G 2/88).

GL H V 7 Changes in claim category in opposition

An amendment can be in the form of a change in the category of a claim, possibly combined with a change in the technical features of the invention. Firstly it must be clear that this amendment is necessitated by grounds for opposition (see H‑II, 3.1).

GL H V 6 Amendments derived from drawings

Care needs to be taken when amendments are based on details which may only be derived from the schematic drawings of the original application (see also H‑IV, 2.4).

In particular, a figure which serves only to give a schematic explanation of the principle of the subject-matter of the invention and not to represent it in every detail does not allow the conclusion that the disclosed teaching purposively excluded a feature not represented (T 170/87

GL H V 5 Amendments to drawings

It sometimes occurs that the drawings used for publication of the application are not those originally filed but are subsequently filed drawings, because the latter are more suitable for reproduction (for drawings filed under Rule 56, see A‑II, 5 and sub-sections).

GL H V 4.2 The subject-matter to be excluded is disclosed in the application as originally filed

The test to be applied is whether the subject-matter remaining in the claim after the introduction of the disclaimer is, be it explicitly or implicitly, directly and unambiguously disclosed in the application as filed to the skilled person using its common general knowledge at the date of filing (or the date of priority according to Art. 89), see G 2/10, Headnote 1a.

This test is the same as that applied when the allowability of a limitation of a claim by a positively d

GL H V 4.1 The subject-matter to be excluded is not disclosed in the application as originally filed (so-called undisclosed disclaimers)

Limiting the scope of a claim by using a "disclaimer" to exclude a technical feature not disclosed in the application as filed may be allowable under Art. 123(2) in the following cases (see G 1/03 and G 1/16, and F‑IV, 4.20):

(i)restoring novelty over a disclosur

GL H V 4 Disclaimers not disclosed in the application as originally filed

4.1 The subject-matter to be excluded is not disclosed in the application as originally filed (so-called undisclosed disclaimers)

4.2 The subject-matter to be excluded is disclosed in the application as originally filed