This is an appeal by the opponent against the maintenance of the opposed patent in amended form by the Opposition Division (OD).
Claims 1 to 14 of the patent as granted referred to a system for controlling a dialysis machine, claims 15 to 21 to a method for controlling such a machine and claims 22 to 29 to a user interface for a dialysis machine.
In the claims as amended, claims 22 to 29 were directed at a dialysis machine comprising a user interface.
The opponent pointed out that this amendment violated A 123(3).
It also requested the Board to refer the following questions to the Enlarged Board (EBA):
1. Which criteria should be applied when deciding whether a change to a patent claim in opposition proceedings from a first physical entity results in a more complex physical entity which qualifies as an aliud and thus constitutes a violation of A 123(3)?2. Is it consistent with the safeguarding of legal certainty for third parties as required by the Protocol on the Interpretation of A 69 if, in at least one designated Contracting State, that change to the claim confers rights on the patent proprietor for the first time which did not exist for the claim as granted?
Here is the verdict of the Board:
Scope of protection
[3.2] Claim 22 as granted was directed to a user interface (12) and screen display apparatus for a dialysis machine (10) that promotes ease of use of said user interface (12) by a user operating said machine (10) without immediate supervision by trained professional medical personnel, comprising features Q to U.
Claim 22 as maintained by the OD, on the other hand, is directed to a dialysis machine comprising a user interface (12) and screen display apparatus that promotes ease of use of said user interface (12) by a user operating said machine (10) without immediate supervision by trained professional medical personnel, comprising features Q to U.
Accordingly, the scope of protection has been changed from “a user interface and screen display apparatus” per se [suitable] for a dialysis machine, i.e. a device A for a device B, to “a dialysis machine comprising a user interface and screen display apparatus”, i.e. a combination of the two devices B and A. The remaining claimed features, Q to U, are identical in both cases. In the Board’s view, the scope of the claim as maintained has been restricted vis-à-vis that of the claim as granted since the subject-matter upheld explicitly comprises the dialysis machine as an additional feature, instead of mere suitability of the user interface and screen display apparatus for a dialysis machine.
The appellant’s arguments relating to the rights of the patent proprietor to sue for indirect or contributory infringement are not relevant to the issue of extension of scope of protection under A 123(3).
According to G 2/88 [3.3] a distinction is to made between the protection conferred by a patent as determined by the claims according to A 69(1) and the rights conferred on the patent owner in the designated Contracting States according to A 64. According to G 2/88 the rights conferred on the proprietor of a European patent under A 64(1) “are the legal rights which the law of a designated Contracting State may confer upon the proprietor, for example, as regards what acts of third parties constitute infringement of the patent, and as regards the remedies which are available in respect of any infringement”. In G 2/88 [3.3] it is clearly ruled that it is not necessary to consider the national laws of the Contracting States in relation to infringement and that this issue is not relevant when deciding upon admissibility of an amendment under A 123(3).
With respect to the question of extension of scope of protection under A 123(3), it is rather appropriate to take into account that the protection conferred by a patent is determined by the terms of the claims, and in particular by the categories of the claims and their technical features, in accordance with A 69(1) and its Protocol (G 2/88). According to the latter, A 69 should be interpreted as a compromise between a fair protection for the patentee and a reasonable degree of legal certainty for third parties. The description and drawings may be employed to a certain extent to interpret the claims, rather than only for the purpose of resolving a possible ambiguity in the wording of the claims.
In the present case, the wording of granted claim 22 is not directed to a user interface and screen display apparatus per se, being suitable for many kinds of devices other than dialysis machines. On the contrary, the expression “for a dialysis machine” is already to be regarded as a limiting technical feature. Moreover, the technical features S, T and U relating to the user interface and screen display apparatus are defined with reference to the dialysis machine and are closely related to its functional interaction therewith. In the description and drawings, the user interface and screen display apparatus is always presented in combination and interaction with the dialysis machine (see, for instance, Figure 1 and paragraph  of the patent specification). Its protection in combination with a dialysis machine was clearly intended, even at the very beginning when the application was filed (see original claim 8).
The decisions cited by the appellant to support his line of argument are not applicable to the present situation. The case underlying T 352/04 relates to a change from a substance to a combination of the substance and a device, which was regarded as a change of the claim category. In the present case, however, there is no such change of category. T 867/05 relates to a change from “a membrane material for use in dialysis ...”, i.e. a substance A for use in a method X, to “an artificial kidney in which there is used a membrane material...”, i.e. a combination of a device B and the substance A, which is also a situation quite different from the present case.
Therefore, the appellant’s argument that the scope of protection has been shifted to an “aliud”, i.e. from a user interface and screen display apparatus to a dialysis machine, thus being in breach of A 123(3), is not accepted by the Board.
Accordingly, the Board is satisfied that the scope of protection has not been extended and that claim 22 as maintained by the OD complies with the requirements of A 123(3).
Referral to the EBA
 Under A 112(1) a board shall refer a question to the EBA if it appears necessary in order to ensure a uniform application of the law or if a point of law of fundamental importance arises. Neither pre-condition is fulfilled for either of the two questions (1) and (2) proposed for referral by the appellant […]. The case law referred to above is not contradictory and not applicable to the present case, which concerns only devices and their technical features.
A change from a (granted) claim, directed to a first physical entity, to a second, more complex physical entity (an “aliud”) in opposition proceedings is a common and usual procedure entirely in line with the requirements of A 123(3): adding one or more limiting technical features to a claimed device naturally renders the claimed entity more complex and results in a restriction rather than an extension of scope. Accordingly, question (1) is not of “fundamental importance”.
Question (2) is not relevant either since the Board considers that the rights of the patentee have not been extended by the modification. As a consequence, the legal certainty of third parties is sufficiently safeguarded.
Moreover, the admissibility of a referral under A 112(1)(a) presupposes that an answer to the question is necessary for the referring board to be able to decide on the appeal (cf. G 3/98 ). This is not the case here where the two questions are not relevant for deciding on the specific situation under consideration. A purely theoretical interest in clarifying points of law is no justification for a referral. Consequently, the request for referral to the EBA is rejected under A 112(1)(a).
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