GL H IV 4.4 In limitation proceedings

Limitation is not an opportunity to re-examine the whole patent; only the amended claims are to be examined with regard to Art. 84 and Art. 123(2) and (3), i.e. what needs to be considered is whether the requested amendments introduce a deficiency within the meaning of those provisions. Claims as granted or as maintained are not examined anew.

GL H IV 4.3 In opposition proceedings

The proprietors of the patent generally have to indicate the basis in the original application documents or claims of the granted patent from which the amendments may be derived (Art. 100(c) and Art. 123(2)).

GL H IV 4.2 In examination proceedings

The question of allowability of amendments is legally a question of whether the application as so amended is allowable. An amended application must of course satisfy all the requirements of the EPC including, in particular, inventive step and the other matters listed in B‑XI, 3.6 (see also C‑III, 2).

GL H IV 4.1 General principles

The other EPC requirements with which amendments have to comply will depend on whether the amendments are filed in examination, opposition or limitation proceedings (see below).

GL H IV 4 Compliance of amendments with other EPC requirements

4.1 General principles

4.2 In examination proceedings

4.3 In opposition proceedings

4.4 In limitation proceedings

GL H IV 3.6 Conflicts between Art. 123(3) and other requirements of the EPC

Other requirements of the EPC may also interact with Art. 123(3) after grant.

GL H IV 3.5 Conflicts between Art. 123(2) and Art. 123(3)

A possible conflict between the requirements of Art. 123(2) and (3) may occur where, in the procedure before grant, a feature was added to the application which is considered unallowable under Art. 123(2) in opposition proceedings.

GL H IV 3.4 Assessment of impermissible extension of the protection conferred

In view of the above considerations, all amendments made to claims and any connected amendments to the description and drawings in the course of opposition proceedings, such as a change in the technical features of the invention, must be examined to determine whether such amendments could result in the extension of the subject-matter beyond the content of the application as originally filed (Art. 123(2)) or in the extension of the protection conferred (Art. 123(3)).

If,

GL H IV 3.3 Version of the granted patent to be considered

In order to verify the criteria of Art. 123(3) the examining or opposition division needs to compare the text of the amended claims with the claims of the patent as granted or as amended in opposition or earlier limitation proceedings, whichever claims are the most recent in force.

GL H IV 3.2 Protection conferred by the patent as granted

The extent of protection conferred by a European patent is determined by the claims.