Key points
- "claim 1 as granted was directed to a septum [;] claim 1 of the third auxiliary request is directed to a vascular access port comprising the septum according to claim 1 as granted"
- The opponent argues that this violates Article 123(3) EPC. The argument is basically that more might infringe "under German patent law with regard to contributory infringement". I assume that amended claim 1 is directed to a vascular access port comprising the septum and a housing (casing) and that the argument is that possibly now selling the housing alone, would be contributory infringement to amended claim 1 (under Article 64(3) EPC and Section 10 (1) PatG).
- The Board does not buy it. “Claim 1 of the third auxiliary request includes all the features of claim 1 as granted, as well as several additional technical features. Both claims are product claims. It follows that claim 1 of the third auxiliary request has a narrower scope of protection than claim 1 as granted (see G 2/88, Reasons 4.1).”
- “In any case, the scope of protection of claim 1 as granted, which is directed to a septum, is broader than that of claim 1 of the third auxiliary request, which is directed to a vascular access port comprising the septum according to claim 1 as granted.”
- “The opponent's arguments relating to possible differences under German patent law with regard to contributory infringement do not change the above assessment. There is a difference between the "extent of the protection conferred" by a patent under Article 69 EPC and the "rights conferred" by a patent under Article 64 EPC. The latter depend on the rights conferred by a national patent in the relevant contracting state and do not need to be considered for the purposes of Article 123(3) EPC. Accordingly, the national laws of contracting states in relation to infringement are not to be taken into account under Article 123(3) EPC either (G 2/88, Reasons 3.3).”
- See also recent decision T 1832/17 of a different Board finding the same.
- Note that the effect of Art. 64(2) EPC is to be taken into account under Article 123(3), see G 2/88, r.5.1 and e.g. T 1471/14.
T 0970/17 - link after the jump
source http://justpatentlaw.blogspot.com/2022/01/t-097017-amending-to-larger-thing.html
