zurück zur Übersicht Referral to the Enlarged Board of Appeal on the question of the extent to which clarity can be examined during opposition and opposition appeal proceedings

In a decision T 373/12 of April 04, 2014 the Technical Board of Appeal 3.2.08 referred four questions to the Enlarged Board of Appeal concerning the examination of clarity of amended claims during opposition and opposition appeal proceedings. 

Within the legal framework of the EPC, clarity is not a ground for opposition. However, in case of amendments of the claims or other parts of the patent in the course of opposition or opposition appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC, including clarity (Art. 100(3)(b) EPC and decision of the Enlarged Board of Appeal G 9/91).

Over the years, there have been a number of decisions of the Technical Boards of Appeal dealing with the question as to what extent the clarity of the amendments to granted claims can be examined in opposition and opposition appeal proceedings. Some Boards have held that an objection under Art. 84 EPC cannot be raised upon the insertion of a granted dependent claim into an independent claim. In some cases this principle was also applied when individual features from a granted dependent claim were inserted into an independent claim. Other Boards were of the opinion that the clarity of amended independent claims should, in principle, be examined even if the amendment consisted of a literal combination of granted claims.

Considering the divergence between some of the decisions of the Boards of Appeal and the fundamental importance of the question regarding what circumstances and to what extent an opposition division or a board of appeal is empowered or required to examine the clarity of claims amended during opposition or opposition appeal proceedings, Board 3.2.08 referred the following questions to the Enlarged Board of Appeal:

1. Is the term “amendments” as used in G 9/91 of the Enlarged Board of Appeal (see point 3.2.1) to be understood as encompassing a literal insertion of (a) elements of dependent claims as granted and/or (b) complete dependent claims as granted into an independent claim, so that the opposition divisions and boards of appeal are required by Article 101(3) EPC always to examine the clarity of independent claims thus amended during the proceedings?

2. If the Enlarged Board of Appeal answers Question 1 in the affirmative, is then an examination of the clarity of the independent claim in such cases limited to the inserted features or may it extend to features already contained in the unamended independent claim?

3. If the Enlarged Board answers Question 1 in the negative, is then an examination of the clarity of independent claims thus amended always excluded?

4. If the Enlarged Board comes to the conclusion that an examination of the clarity of independent claims thus amended is neither always required nor always excluded, what then are the conditions to be applied in deciding whether an examination of clarity comes into question in a given case?

The answers of the Enlarged Board of Appeal might have a significant impact on everyday practice, since amendments to granted claims during opposition and opposition appeal proceedings are quite frequent. In 2013, 40% of oppositions resulted in the patent at issue being upheld in amended form.

The text of the decision T 373/12 can be downloaded at 
http://www.mueller-bore.de/tl_files/Decisions_EPO/05851833.pdf

Should you have any questions, please feel free to contact burger@mueller-bore.de.

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