The Board of Appeal 3.2.8 of the European Patent Office has referred a case to the Enlarged Board of Appeal to clarify the question whether lack of clarity of a claim can be examined in opposition proceedings. With regard to this question there is a divergence in the decisions of the Boards of Appeal. On the one hand, Art. 100 EPC does not include lack of clarity as a ground of opposition. On the other hand, it is established case law that, if amended claims are submitted in opposition proceedings, they have to be examined for all requirements of the European Patent Convention including the requirement of clarity of the claims.
In this context the question is what can be understood under amended claims especially in cases where granted independent claims are combined with granted sub-claims. For the individual claims clarity had already been examined in the examination proceedings. On the other hand, the combination of granted claims might lead to new unclarity or even could be seen as a new amended claim, which has to be examined with regard to the clarity requirement. The decision, case no. T 0373/12, in full text can be found here.
The decision T 0373/12 is based on the decision of the opposition division to revoke the European patent EP 1 814 480. In the following appeal procedure the patent proprietor filed an amended set of claims as an auxiliary request, in which granted claim 1 was combined with granted dependent claim 3. Claim 1 related to a prostatic medical device and claim 3 contained the additional feature that the prostatic liner (38), being part of the medical device, was coated over substantially all of its surface area.
Although claim 3 was a granted claim the respondents in appeal proceedings objected to the claim as being unclear because of the expression “substantially” which, however, was included as part of the granted sub-claim.
In its decision the Board came to the conclusion that there was a divergence in case law between the decisions of the Boards of Appeal. In the past, different approaches were taken by the Boards of Appeal in deciding the question of clarity of an amended claim.
On the one hand, there are decisions in which an amended claim is understood as a substantial amendment and not as a mere combination of the wording of granted independent and dependent claims, (see, f. ex. T 381/02, T 1459/05 and T 1440/08). These decisions only permitted examination of clarity when a contradiction or ambiguity had been introduced into the claims resulting from the combination of the granted independent claim and the granted dependent claim. Several decisions apply this kind of approach (T472/88, T420/00, T 681/00).
Then again, there are new decisions of some Boards taking a different approach. In these decisions the amendment of a claim is understood as any change of a granted claim, either by introducing a matter from the specification as originally filed or by introducing features from other claims including other sub-claims. In the decision T 459/09 the Board of Appeal applied this approach and stated that, even if the amendment only consisted in a mere literal combination of claims of the patent as granted, clarity of such an amended independent claim should be examined. It is argued that any other approach would entail the risk of unduly restricting the mandate for examination of an amended patent, which Article 101(3) EPC imposes on an opposition division having to deal with an amended patent. The decision comes to the conclusion that the correct understanding of Article 101(3) EPC is that amended claims have to be examined with regard to all requirements of the EPC. Therefore, the term “amendments” as defined by Article 101(3) EPC should not be understood in a narrow manner and should not be dependent on the way the patent is modified or the amendment is constructed. In the decisions T 409/10 and T 1459/05 the same approach was used.
As the deciding Board is in T 0373/12 of the opinion that the question whether amended claims have to be examined under the aspect of clarity is a question of fundamental importance within the definition of Article 112(1) EPC, they decided to refer the question to the Enlarged Board of Appeal. The case is pending under G 3/14 and the questions referred to the Enlarged Board of Appeal are the following:
1. Is the term “amendments” as used in decision 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 opposition divisions and Boards of Appeal are requested 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 is indicated in a given case?
The pending case before the Enlarged Board of Appeal may have the consequence that opposition cases involving questions of clarity of amended claims will probably be deferred until the Enlarged Board of Appeal has reached a decision. Please also see the publication by T.Godemeyer in EPI information 4/14 p.157-159. We at werkpatent will follow this case closely and will report about the outcome later.
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