Amendments Under The European Patent Convention - Article 123(3) EPC

Article 123(3) EPC

Article 123(3) EPC prohibits amendments to granted claims during opposition proceedings in such a way as to extend the protection conferred by a European patent. It is for instance "not allowable to replace a technical feature of a granted claim with another technical feature which causes the claim to extend to subject-matter which was not encompassed by the granted claim." "Article 123(3) EPC is directly aimed at protecting the interests of third parties by prohibiting any broadening of the claims of a granted patent, even if there should be a basis for such broadening in the application as filed." While, before grant, the legal security of third parties has been considered to be "sufficiently protected by the prohibition of extending the content of the application by amendment beyond what was originally disclosed", without therefore prohibiting a broadening of the claims before grant, the situation is different after grant. After grant, "the interests of third parties are further protected by Article 123(3) EPC the patentee's right to amend the claims is limited by the scope of the granted patent."

According to Enlarged Board of Appeal decision G 2/88, "it is the totality of the claims before amendment in comparison with the totality of the claims after the proposed amendment that has to be considered". If for instance the subject-matter of the claims is changed during opposition proceedings to a different embodiment and if, thereby, the scope of protection of the claims has been extended, the amendment, or change, is contrary to Article 123(3) EPC.