T 2259/09 – Iconoclasm

This is a revocation appeal.

The Opposition Division (OD) had revoked the patent on the basis that the patent as amended according to the auxiliary requests did not meet the requirement of A 123(3). In particular, due to the deletion of the complete set of drawings from the granted patent, the protection conferred by the patent had been extended.

[3.1] Whilst the patent as granted comprises a set of Figures 1 to 29, in the amended patent according to the main request (request set A) all drawings have been deleted to comply with the requirements of A 123(2), the description has been correspondingly adapted by deleting all reference to the drawings, and all reference signs have been deleted from the description and the claims, pursuant to R 46(2)(i).

[3.2] With the deletion of the drawings from the patent specification, technical information is undoubtedly lost. Whilst this loss of information may also introduce some uncertainties about certain details of the preferred embodiments depicted in the drawings, it cannot be concluded, as in the impugned decision, that it automatically broadens the protection conferred by the patent.

The OD had argued that according to A 69(1), although the extent of the protection conferred by the European patent was determined by the claims, the description and drawings were to be used to interpret the claims, in particular to resolve ambiguities in the claims. Hence, amendments to the description and drawings generally had an impact on the extent of protection conferred by the European patent.

[3.3] In the present case, the claims are not limited to any of the details, dimensions or features specifically depicted in the (deleted) drawings (such as those mentioned under point 3.2.6 of the impugned decision). Moreover, under A 69(1), reference to the drawings of a patent specification may be helpful or even necessary if an ambiguity exists in the granted claim.

However, in the present case, as the appellant points out, the impugned decision has not identified any such ambiguity; nor can the Board see any. None of the specific features of claim 1 of the granted patent has a different or broader meaning without the drawings than with the drawings. Nor does deleting the drawings create any potential additional ambiguity beyond that which may have been present in claim 1 of the patent as granted.

[3.4] Consequently, the Board comes to the conclusion that the deletion of the drawings does not extend the scope of the protection conferred by the main request, which request therefore fulfils the provisions of A 123(3).

The Board then remitted the case to the first instance.

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