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23.04.15

Enlarged Board makes it harder to raise clarity objections in opposition

One of the most important recent decisions from the EPO’s Enlarged Board of Appeal with regard to everyday practice at the EPO is that in case G 3/14. The main question posed in this case was whether an EPO opposition division should consider the clarity of an independent claim when the claim has been amended during the opposition but only by inserting features from a granted dependent claim. The Enlarged Board decided such considerations should not arise, and also made a more general pronouncement on clarity objections during oppositions. As will be discussed below, the Enlarged Board’s decision in this case is good news for patentees because it restricts the circumstances in which opponents can raise clarity objections against a granted patent.

 

Background to the decision

Unusually, the Enlarged Board decided to go beyond the specific questions asked in this case and revisit the whole issue of when and to what extent amended claims can be examined for clarity in opposition proceedings. The EPC is clear that a lack of clarity in the claims of a patent is not a ground for opposition. However, the EPC does not restrict which requirements of the EPC can be considered when assessing a patent that has been amended in an opposition. This assessment could therefore potentially include determining whether the claims of the amended patent are clear. The tension between these two aspects of the EPC raises the question of where the line should be drawn in allowing clarity objections against an amended patent.

The EPC itself leaves open to what extent an opposition division can examine the clarity of patent claims following particular types of amendment. EPO Board of Appeal case law had been divergent on the issue to an extent, with the most influential line of case law stating that only clarity objections “arising from” the amendments made could be considered. Other decisions held that the opposition divisions had a much wider freedom to consider clarity objections following an amendment. This divergence has now been resolved by the Enlarged Board.

 

The decision

The Enlarged Board’s reasoning is complex, with the decision itself coming in at 93 pages long. Fortunately though, the Enlarged Board’s conclusion is simple. Essentially the Enlarged Board has followed the first line of case law mentioned above, but has arguably arrived at an even more restrictive test for when clarity objections can be considered. The Enlarged Board concludes that an amended claim can be examined for clarity only when, and then only to the extent that, the amendment introduces a lack of clarity that was not already present in the granted claims.

 

Consequences of the decision

In the situation described in the original questions asked of the Enlarged Board, the decision means that clarity cannot be examined where an amendment only consists of adding one or more granted dependent claims to an independent claim. Therefore, making this type of amendment in response to an opposition will ensure that clarity issues cannot be raised.

The decision in case G 3/14 also means that unamended features of a claim cannot be examined for clarity in an opposition even when the claim as a whole has been amended. Pre-existing clarity problems in a patent will not be opened up to attack by making an unrelated amendment.

Given that most patents are amended to some extent during opposition, we think that this decision will prove important in reducing the number of clarity objections patentees see during opposition proceedings. In addition to leading to better outcomes for patentees, this should help to reduce the average complexity of the proceedings.

If you have any questions on this matter, please do not hesitate to contact Matt Turner at matthewturner@mskpatents.com, Andy Cloughley at andycloughley@mskpatents.com or your usual contact at MSK.

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