What is a 371 patent application

Case Law of the Boards of Appeal

2.4.9 Replacement of a narrow term with a less narrow term

According to the Board of Appeal in T 371/88 (OJ 1992, 157) it does not constitute a violation of Art. 123 (3) EPC 1973 if a narrow term in the granted claim, which strictly according to its literal meaning does not clearly encompass an embodiment contained in the description, is replaced by a less narrow one Term is replaced that clearly also includes this embodiment, provided that two conditions are met: The technical meaning of the narrow term should not be so clear in the given context that it can determine the scope of protection even without interpretation with the aid of the description and drawings; Furthermore, it must be sufficiently clear from the description and the drawings and from the examination procedure until the patent is granted that the further embodiment belongs to the invention and that it was never intended to exclude it from patent protection (see also T 673/89, the T 371/88 approved; T 738/95that of T 371/88 deviates; T 750/02that finds that the first condition in T 371/88 was not fulfilled; T 749/03which determines that both conditions were met and which is summarized below in Chapter II.E.2.4.10).

In T 824/08 the board found that the grounds of T 371/88 could not be used in the present case because the restrictive feature was inherently clear and did not pose any problems in determining the scope of the claim.