Can patents be expanded or adapted

Guidelines for Examination

Contradictions between the description and the claims are to be avoided if they give rise to doubts about the scope of protection and thus impair the clarity or support of the claim according to Art. 84 sentence 2 or, alternatively, result in the claim according to Art. 84 sentence 1 being objected to can. These contradictions can be of the following types:

The description can e.g. B. contain information from which it can be seen that the invention is limited to a certain feature; however, the claims contain no such limitation; neither is this feature particularly emphasized in the description, and there is no reason to assume that the feature is essential to the practice of the invention. In this case, the contradiction can be resolved either by expanding the description or by restricting the patent claims. Conversely, if the patent claims are worded more narrowly than the description, the patent claims can be expanded or the description can be restricted. See also section iii below.

Contradiction regarding obviously essential features

From the general specialist knowledge or from the information or the context of the description, z. For example, it can be seen that a certain technical feature, which is not mentioned in an independent claim, is essential for the implementation of the invention or, in other words, is required to achieve the object of the invention. In this case, the claim does not meet the requirements of Art. 84; Art. 84 sentence 1 in conjunction with Rule 43 (1) and Rule 43 (3) is to be understood in such a way that an independent patent claim is not only technically understandable, but also clearly characterizes the subject matter of the invention, i. H. must state all its essential characteristics (see T 32/82). If the applicant submits to such an objection z. B. convincingly demonstrates through additional documents or other evidence that the feature is actually not essential, he may retain the claim unchanged and, if necessary, change the description. The converse case, in which an independent claim contains features which do not appear to be essential for carrying out the invention, is not objectionable. Here the decision is left to the applicant. The department therefore does not suggest that a claim be expanded by omitting obviously insignificant features.

Part of the subject matter of the description or the drawings is not covered by the claims.

If parts of the description give the reader the impression that they disclose ways of carrying out the invention, but do not fall under the wording of the claims or no longer fall under the wording of the claims due to changed claims, these parts often give rise to doubts about the scope of protection and thus impair the clarity or support the claims according to Art. 84 sentence 2 or alternatively lead to the fact that the claims according to Art. 84 sentence 1 can be objected to. In this case, the description must be adapted to the claims in order to avoid contradictions between claims and description.

Embodiments in the description that no longer fall under the independent claims (e.g. if the description includes an alternative for at least one feature that no longer falls under the amended claims) are to be deleted unless they can after It may reasonably be believed appropriate to highlight certain aspects of the amended claims. If this is the case, it must be clearly stated that an embodiment does not fall under the claims (T 1808/06).

This is the case, for example, if in all patent claims of an electrical circuit the claims z. For example, it has been changed to refer to a vehicle using semiconductor elements which uses electric motors, but in one of the embodiments shown in the description and in the drawings, however, electron tubes an internal combustion engine are used instead. Such a contradiction can usually be resolved by the embodiment with the internal combustion engine that either the claims are expanded (provided that this expansion is supported accordingly by the description and the drawings as a whole) or the "excess" from the description and removed from the drawings. Alternatively, such embodiments are to be marked as not covered by the claimed invention (e.g. "embodiment not covered by the claimed invention"). General statements such as "Embodiments not falling under the scope of protection of the appended claims are to be regarded merely as examples that facilitate the understanding of the invention", which do not make it clear which part of the description is no longer covered, are not sufficient.

Nor is it sufficient for clarification that the relevant part of the description does not fall under the scope of protection of the claimed invention if the term "invention" is replaced by "disclosure" and / or the term "embodiment" by "example", "aspect" or the like is replaced. Rather, it should be expressly stated that this part of the description does not reproduce any part of the claimed invention.

Likewise, items in the description that are excluded from patentability must either be deleted or reworded so that they do not fall under the patentability exceptions, or clearly indicated that they are not part of the claimed invention. Will, however For examples and technical descriptions of devices, products or processes in the description or in the drawings, which are not covered in the claims, it is stated that these are not embodiments of the invention, but the state of the art or examples, which facilitate the understanding of the invention, these examples can be left in the application.

In addition, features that are indispensable for the independent claims may not be presented as optional in the description by using wording such as “preferably”, “can / can” or “optional”. The description should be amended by deleting such formulations when they precede a feature of an independent claim.

For the admissibility of changes in the description, see also H-V, 2.

Formulations similar to claims

See F-IV, 4.4.

Case iii) often occurs when the claims have been limited as a result of a request under Rule 62a (1) or Rule 63 (1), but the subject matter excluded from the search is still present in the description. According to Art. 84, an objection is raised against such objects (contradiction between the claims and the description), unless the original objection was not justified.

Case iii) also occurs if the claims have been limited to one of the originally claimed inventions following an objection due to lack of unity (Rule 64 or Rule 164): the embodiments or examples of the inventions not claimed must either be deleted or - if they can reasonably be considered appropriate to highlight certain aspects of the subject matter changed - clearly identified as not belonging to the claimed invention.

Case iv) often occurs with divisional applications when the original set of claims of the parent application is appended to the description.