The Enlarged Board of Appeal’s Decision on Clarity in Opposition Proceedings

Background

Although lack of clarity is not an allowable ground for opposition under Article 100 EPC, Article 101(3) EPC requires that a patent that has been amended during opposition proceedings must be examined by the opposition division concerned to ensure that it meets the requirements of the European Patent Convention (EPC).  As such, if an amendment made to a claim during opposition proceedings is found to render the subject matter of that claim unclear, so that it contravenes Article 84 EPC, then, according to Article 101(3)(b) EPC, the division must revoke the corresponding patent.  This was confirmed in EBA decision G9/91.

In the particular case at issue in G3/14, during the course of an appeal stemming from an opposition, the proprietor attempted to import all of the features recited in a dependent claim into an independent claim.  However, the opponent objected to this combining of subject matter on the ground that, as the previously dependent claim comprised the term “substantially”, the new independent claim was now unclear.

In reply, the proprietor asserted that combining the subject matter of an existing independent claim with the subject matter of an existing dependent does not constitute an “amendment” and so Article 101(3)(b) EPC does not apply.

The Board of Appeal noted, however, that previous boards have adopted different approaches in similar situations, so that two diverging lines of case law existed:

• The narrowest approach (referred to as the “conventional” approach in G 3/14) was viewed to be exemplified by Technical Board of Appeal (TBA) decision T 301/87.  The board in this decision stated that lack of clarity could be considered where it was introduced by the amendment, but not if the objection did not arise out of the amendments made.
• The most far reaching approaches taken by a board were identified as T1459/05 and T 459/09 (referred to as the “diverging” approach in G 3/14).  The board in the first decision stated that examination of the clarity of a feature of a granted dependent claim incorporated into a granted independent claim was permissible, especially where that additional feature was critical for differentiation from the prior art but could be regarded as unclear.  In the latter decision, the board stated that “unrestricted exercise” of the examination power of Article 101(3) EPC was justified where a claim was amended with a technically meaningful feature.

Questions

As a result, the following questions were referred to the EBA:

1. Is the term “amendments” as used in G9/91 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/0r (b) complete dependent claims as granted into an independent claim, so that 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 answers Question 1 in the affirmative, is then an examination of the clarity of independent claims 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 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 questions in a given case? 

Answers

The EBA subsequently responded to the above questions with the following answers:

“(81) Therefore the Enlarged Board’s answer to part (b) of the referred question 1 is: no. In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC.” (emphasis added by underlining and bold)

“(85) Therefore the Enlarged Board’s answer to part (a) of the referred question 1 is: In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC”.

 “(86) the above answers also deal with referred questions 2, 3 and 4”.

In the decision, the Board also commented that:

“(79) Several submissions argue that a Type B amendment* is not an amendment within the meaning of Article 101(3) EPC.  The Enlarged Board does not agree.  It appears to be unrealistic to say that a patent has not been amended when the whole purpose of the new wording is to save the patent from revocation…”. (* where the subject matter of an independent claim is combined with the subject matter of a dependent claim)

“(80)…But in any event, while the patent must be considered to have been amended, the claims which is in place after the amendment is in reality and substance not a new claims.  It was already in the granted patent.  …(c) The Enlarged Board has already concluded (points 74 to 78, above) that the deletion of an independent claim with its dependent claims does not permit examination of the remaining claims for compliance with Article 84 EPC…”.

“(82)…As to Type A (i) cases (alternative embodiments), the Enlarged Board does not see these cases as being in substance different from Type B amendments.  The granted dependent claim could (but for the requirement of conciseness) have been written out as two (or more) separate dependent claims.  So far as concerns claims of this type, therefore, the answer which the Enlarged Board gives is the same as that for Type B amendments”.

“(84) As regard Type A (ii) amendments (features disconnected by the amendments from other features of the dependent claims), it has never been doubted that where an alleged lack of compliance with Article 84 EPC is introduced by such an amendment, the claims may be examined for such for compliance…”.

 Conclusion

As can be appreciated from the above answers and comments, the EBA explicitly approves the conventional approach taken in T 301/87 in which that board stated that it would be “somewhat absurd if the making of a minor amendment could enable objections outside Article 100 EPC to be raised which have no connection with the amendment itself”.

This is confirmed by the EBA’s comments in G3/14 as set out below:

“(87) The Enlarged Board thus approves the conventional line of jurisprudence as exemplified by T301/87 (section E(a), points 18 to 26, above), and disapproves the line of jurisprudence as exemplified by T472/88 (explained in section E(b), points 27 to 29, above), and also the line of “diverging” jurisprudence (as exemplified in the case set out in section E(c), points 30 to 43, above)”.

Thus, clarity can only be examined to the extent that an amendment introduces a clarity issue.

Combining an independent claim and a dependent claim is considered to be an amendment, but the resultant claim can not be examined with respect to clarity, as such an amendment can not be considered to introduce non-compliance with Article 84 EPC: if the subject matter of the new claim is unclear, then the lack of clarity must have been there previously in the claims prior to combining them.   The board decided that the same is also true in the case of the introduction of alternative embodiments from a dependent claim into an independent claim.

The conclusion, therefore, to be drawn from decision G3/14 is that examination of the clarity of claims in opposition proceedings will be much more restricted in scope than had previously been allowed under the “diverging” line of case law.  It could be that Examiners will now pay greater attention to dependent claims during prosecution of European patent applications when examining the clarity of their subject matter.

Importantly, it would now seem that only the grounds of opposition exhaustively listed under Article 100 EPC are available for attacking the subject matter of claims present on grant.   Consequently, lack of clarity of the subject matter of claims about to grant would be best objected to by filing third party observations, which can be filed at any time after publication of a patent application right up until the end of possible opposition proceedings.

On behalf of our clients, we welcome decision G3/14 as it “clarifies” the interpretation and application of a previously “unclear” aspect of the EPC.

This update was prepared by Dr Katie Cowley and Dr Steven Cuss, both associates in the Chemical and Life Sciences Department.  If you require any more information, please contact your preferred Venner Shipley attorney.