T 0847/24: Adding A Production Step Can Extend Scope Of Protection

Can a production step be added to a claim for a method of design after grant?

The EPO Board of appeal has held that amending a method claim with an abstract output, such as data representing a design for a product, to include a step of actually producing a product according to the design unallowably extends the scope of protection. The decision arises from T 0847/24, which discussed the impact that Article 64(2) EPC can have on the scope of protection even when making a narrowing amendment.

Background

The granted patent related to a computer implemented method for configuring a surgical guide and an implant to be used as a part of a facial surgery. The broadest claim of the granted patent was to a method including steps of generating a 3D anatomical model, simulating an osteotomy (a surgery involving the cutting and repositioning of bone portions), defining a plurality of attachment points on the cut bone portions for attaching the implant, and then determining a structure for