Friday, 27 March 2015

G 3/14: is the clarity issue newly introduced or not?



G 3/14 relates to the examination of clarity in opposition proceedings. 
Yesterday, the Enlarged Board of Appeal decision G 3/14 has been published by the EPO. A 97 pages long document with extensive discussions of the all submissions and of case law of the Boards of Appeal. This blog mainly relates to the reasons of the Enlarged Board with respect to the question of law. The referring Board of Appeal asked questions about the interpretation of decision G 9/91, however, the Enlarged Board of Appeal changed the question of law towards: What is the correct interpretation of Art. 101(3) EPC?
After studying the reasons, it seems that "introduces" is the most important term in the catchwords. A combination of granted claims does not comprise newly introduced clarity issues, because these issues were already present in the granted claims. 
One of the main lines of reasoning is: A claim tree with dependent claims represents (quite often) a large number of independent claims which are the result of writing out all claimed combinations. When the patent is granted, all the possible combinations of claims are, at least in theory, fully examined (for example also for clarity, Art. 84 EPC). When, in opposition proceedings a dependent claim is combined with an independent claim, a number of the granted combinations of claims is deleted and one of the already examined and granted combination is chosen to be the independent claim. 
According to the Enlarged Board, it is an explicit choice in the EPC that clarity is not a ground for opposition and it is an explicit choice of the legislator that clarity must be addressed in Examination proceedings - "opposition is not a continuation of the Examination proceedings". Therefore, only newly introduced clarity issues can be a ground of revocation of the patent under Art. 101(3) EPC.

Catchwords

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.


Summary of Facts and Submissions
 

(...) 

Reasons for the Decision 

(...)

B. The referred questions: preliminary considerations

2. The referring decision asks, in part (b) of Question 1, whether the term "amendments" as used in G 9/91 is to be understood as encompassing a literal insertion of complete dependent claims as granted into an independent claim. Adopting the classification of the referring Board, this will be referred to as a Type B amendment. A simplified example is: granted claim 1, a product comprising X; granted claim 2, a product according to claim 1 wherein the amount of X comprised in the product is substantial; amended claim 1: a product comprising a substantial amount of X.
The lack of clarity may of course already have existed in the independent claim, for example: granted claim 1, a product comprising a substantial amount of X; granted claim 2, a product according to claim 1 also comprising Y. See, e.g., T 626/91.

3. The referring decision also asks, in part (a) of Question 1, whether the term "amendments" as used in G 9/91 is to be understood as encompassing a literal insertion of elements of dependent claims as granted into an independent claim. Again adopting the classification of the referring Board, this will be referred to as a Type A amendment. This class of amendments is not so straightforward as the Type B class of amendments. It includes:
(a) Cases where a dependent claim contains within it alternative embodiments (perhaps with one or more of them being preferred), one of which is then combined with its independent claim, for example: granted claim 1, a product comprising X; granted claim 2, a product according to claim 1, comprising also a substantial amount of either Y or [preferably] Z, the amended claim then being to a product comprising X and also a substantial amount of Z. Examples are T 681/00 and T 1484/07. A similar example would be where a dependent claim requires a compound to be chosen from amongst a range of specified compounds, the amended independent claim then requiring the product to contain one such compound. See, e.g., T 493/10. The Enlarged Board will refer to these as Type A(i) cases.
(b) Cases where a feature is introduced into an independent claim from a dependent claim, being a feature which was previously connected with other features of that dependent claim from which it is now disconnected. The referral is not really concerned with cases where the effect of an amendment is to introduce an alleged lack of clarity which did not previously exist. It has not been doubted in this referral and is the consistent jurisprudence of the Boards of Appeal that in such cases amended claims may be examined for compliance with Article 84 EPC. Rather, the referral is concerned with cases where the effect of an amendment is not to introduce a lack of clarity, i.e. it is concerned with cases where the alleged lack of clarity already existed in the granted claims. The point was well put in T 589/09, where a technical feature in dependent claim 4 was incorporated into the independent claim 1. The Board said that:
"... the incorporated feature of granted claim 4 does not interact with the other features of claim 1 in a way that modifies the original meaning of the combination of features of granted claims 1 and 4."
(See point 1.2.1 of the Reasons).
The Enlarged Board will refer to these as Type A(ii) cases.

4. The referring Board was confronted with a Type B case (see point I, above) and therefore an answer to the question concerning Type A cases is not required by the referring Board to reach a decision on the appeal before it. Nevertheless the Enlarged Board considers that it is appropriate to deal with both types of cases in this decision.

5. Beyond these two general classes of amendments raised in the referral, other variants relating to granted claims are possible. Examples, not necessarily exclusive, are:
(a) Deletion of an entire independent claim (usually with any dependent claims) leaving other independent claims (and their dependent claims) untouched, e.g., T 9/87 (OJ EPO 1989, 438).
(b) Deletion of some dependent claims entirely, e.g., T 522/91 and T 759/91.
(c) An amendment consisting of deletion of wording from a granted independent or dependent claim, thereby narrowing its scope, but leaving a pre-existing unclear feature. See, e.g., T 301/87 (granted claim amended by deletion of the phrase "exemplified but not limited to" various DNA inserts, thus limiting the claim to the previously exemplified DNA inserts).
(d) Deletion of optional features from a granted claim (whether independent or dependent).
The Enlarged Board considers that the answers to the referred questions should also take these other possible scenarios into account and be applicable to them.

6. The referral refers to the examination of amended claims for clarity. As pointed out in various submissions, however, Article 84 EPC, which is at the heart of the referral, concerns more than just clarity as such. Thus in T 433/97 an inconsistency between an amended claim and certain parts of the description and drawings was alleged but this did not originate with the amended passages of the claim but was already present in the claim as granted. In T 367/96 lack of support for an amended claim was alleged but such lack of support was already present as regards the granted patent. In T 518/03 it was alleged that the independent claims lacked essential features, an objection usually dealt with as one of lack of clarity under Article 84 EPC in conjunction with Rules 43(1) and (3) EPC. In each of these cases the opponent's objections (based on Article 84 EPC) were disregarded in accordance with the "conventional" jurisprudence identified by the referring Board (i.e. that starting from T 301/87, OJ EPO 1990, 335 – see point 18, below). The Enlarged Board considers that the answers to the referred questions also need to take these kinds of situations into account.

7. In summary, and having regard to the purpose for which questions are referred to the Enlarged Board (as set out in Article 112 EPC), the Enlarged Board does not consider it appropriate to take too narrow a view of the referred questions, but that it should consider and answer them in such a way as to clarify the points of law which lie behind them. See G 2/88 and G 6/88 (OJ EPO 1990, 93 and 114), point 1 of the Reasons in both cases.

C. The question of law

8. The question of law turns on the correct interpretation of Article 101(3) EPC, which provides as follows:
"If the Opposition Division [or Board of Appeal] is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during the opposition proceedings, the patent and the invention to which it relates
(a) meet the requirements of this Convention, it shall decide to maintain the patent as amended, provided that the conditions laid down in the Implementing Regulations are fulfilled;
(b) do not meet the requirements of this Convention, it shall revoke the patent."
(Words in square brackets added by the Enlarged Board, based on Article 111(1) EPC and Rule 100(1) EPC).

9. Question 1 of the referral asks how the term "amendments" as used in G 9/91 is to be understood. While the Enlarged Board understands why the question was framed in this way the relevant question of law is not how the statement of the Enlarged Board in G 9/91 should be interpreted but rather how Article 101(3) EPC should be interpreted.

10. Put broadly, at one end of the spectrum it is argued that the article means that whenever an amendment is made to a granted patent, the whole patent, and not just the amended portions of the claims, must be examined for compliance with all the requirements of the EPC. At the other end it is argued that an objection under Article 84 EPC can only be examined when an alleged lack of clarity has been introduced by the amendment, i.e., when it did not previously exist. There are also intermediate positions.

(...)

G. The answers to the referred questions

G.(i) Preliminary matters

73. The possible suggested constructions include:
(a) The conventional interpretation (section E(a), points 18 to 26, above).
(b) The interpretation whereby an extended meaning is given to the expression "arising out of" (see section E(b), points 27 to 29, above).
(c) Examination for clarity is permissible in exceptional cases, the power to be exercised on a case-by-case basis as a matter of discretion when the added feature is all that may distinguish the subject matter of the amended claim from the prior art (T 1459/05).
(d) Unrestricted examination of the amended claims for lack of clarity is permissible on a case-by-case basis, irrespective of the kind of amendment (T 459/09).
(e) An interpretation whereby the amended patent as a whole must be examined for compliance with all the requirements of the EPC, alternatively for the requirements of Article 84 EPC.
Other variations are also possible.

74. At the end of the spectrum represented by (e), it is argued essentially that Article 101(3) EPC is perfectly clear on its ordinary reading and that thus no, or no further interpretation is required. Thus all that has to be asked is whether the patent as amended (and the invention to which it relates), i.e., the whole patent, meets all the requirements of the EPC. The Enlarged Board considers that such a reading of Article 101(3) EPC cannot be correct, at least for the following two reasons.

75. The first is that in G 1/91 the Enlarged Board has already decided otherwise (see point 12, above). There the Enlarged Board in effect held that Article 102(3) EPC 1973, now Article 101(3) EPC, did not apply to those requirements of the EPC which it would be unreasonable to apply to the patent as well as to the patent application. The present case is of course not the same because, as the Enlarged Board in the present case has already concluded, the requirements of Article 84 EPC are one of the requirements of the EPC for the purposes of Article 101(3) EPC. See point 54, above. Nevertheless, G 1/91 demonstrates that Article 101(3) EPC is not to be read literally, as required by approach (e), above.

76. The second reason is that if this reading were correct, or even if it were to be applied in a more limited way so as to apply only to the amended claims rather than to the patent as a whole, it would mean that for example the decision and opinion in G 9/91 and G 10/91 respectively were no longer good law, at least not to their full extent. This is demonstrated by considering the example of a case where (a) a patent is opposed on the grounds of lack of novelty and/or inventive step (Article 100(a) EPC), (b) the proprietor then makes an amendment to overcome these objections, (c) the opponent then objects for the first time that the invention is insufficiently disclosed (Article 100(b) / 83 EPC), this objection having nothing to do with anything introduced by the amendment, the opponent arguing that by virtue of Article 101(3) EPC any amendment opens the door to the whole patent (alternatively perhaps just the amended claim) being examined for compliance with the EPC. If the argument succeeded, it would thus mean that examination of the (amended) claims would now be possible in respect of any objection which could have been raised as a ground for opposition but which was not so raised, something which the Enlarged Board has decided in the above cases is in principle not allowable. The Enlarged Board of course held that the Opposition Division has a discretion under Article 114 EPC to introduce new grounds for opposition, but this is a separate point and in any event the Boards of Appeal do not have such a discretion, at least not unless the proprietor agrees (G 10/91, point 18 of the Reasons). The present Board has already commented on G 9/91 and G 10/91 (points 14 to 17, above). It has no reason to consider that what was said there was wrong or that the conclusions should be modified in some way.

77. The second alternative to (e), above, an interpretation whereby the amended patent as a whole must be examined for compliance with the requirements of Article 84 EPC, suffers from the problem that it makes a seemingly unwarranted distinction between Article 84 EPC and other requirements of the EPC which are clearly within the scope of Article 101(3) EPC, for example Articles 123, 54, 56 and 83 EPC. Leaving this point aside, however, the issue can nevertheless be examined by considering the case of an amendment consisting of the striking out of one or more independent claims (with any dependent claims), leaving other independent claims and their dependent claims intact, or of the striking out of one or more dependent claims, leaving the independent claims and other dependent claims intact (see points 5(a) and 5(b), above). In these cases, the Enlarged Board considers it would be unreasonable (using the language of G 1/91) if these other claims could now be examined for compliance with the requirements of Article 84 EPC. To do so would be to open Pandora's Box, enabling an opponent to raise any number of clarity objections against these other granted claims, even though they are untouched by the amendment. It would in effect make Article 84 EPC a ground for opposition in a large number of cases, something which would be go against the underlying reason why the requirements of Article 84 EPC do not form a ground for opposition (see point 69, above). In this it should be borne in mind that a large percentage of patents are amended in opposition proceedings (about 70%, according to the comments of the President). The Enlarged Board reaches the same conclusion in the case of an amendment to a claim, falling short of its complete deletion, but where some other claim, untouched by the amendment, contains a possible lack of clarity.

78. The answers to the referred question should take these conclusions into account.

G.(ii) Type B amendments

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. The wording of Article 101(3) EPC also expressly states that regard is to be had to the "amendments" in deciding whether the patent must be revoked or can be maintained. There appears to be no meaningful distinction in this context between an amendment which is substantive and one which is not. Whether the relevant claim is to be regarded as having been amended is a different issue, discussed below.

80. Several considerations lead the Enlarged Board to conclude that the conventional approach to the issue of construction is the correct one in the case of Type B amendments:
(a) This type of amendment, although often conveniently referred to (by the Enlarged Board included) as a combination of claims, in reality consists of striking out the original independent claim and then writing out the previous dependent claim in full. In this respect it is to be noted that Rule 43(4) EPC prevents an applicant writing out the dependent claim as a separate independent claim:
"Any claim which includes all the features of any other claim (dependent claim) shall contain, if possible at the beginning, a reference to the other claim and then state the additional features."
In the light of this it can be questioned whether it is appropriate, as the referring decision does, to speak of "a literal insertion of ... complete dependent claims as granted into an independent claim". But in any event, while the patent must be considered to have been amended, the claim which is in place after the amendment is in reality and substance not a new claim. It was already in the granted patent.
(b) If the patent had not been amended at all, the opponent would not have been able to raise an objection of lack of clarity against the relevant granted dependent claim. Also in the case where the alleged unclear feature was already contained in the independent claim which is now combined with a clear dependent claim, no clarity objection would have been possible against that independent claim. Yet this is now said to be possible as a result of the amendment. Such a result appears to be fortuitous and arbitrary so far as concerns the right to raise a clarity objection against the unclear feature.
(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. Again, it appears to the Enlarged Board that it would be arbitrary and unjustified to reach a different conclusion for Type B amendments considering that, but for Rule 43(4) EPC, the dependent claim could have been formulated as a separate independent claim. Rule 43(4) EPC is not concerned with substantive patentability but with ensuring that patent claims are drafted concisely.
(d) The logic of the argument that in the case of a Type B amendment clarity should be examined when the meaning of the claim becomes critical because of newly cited prior art, because the Examining Division was unaware of it, is weak when the case of the unamended patent is considered. Thus if the patent is defended as granted, the fact that new prior art is cited which demonstrates that a granted claim is unclear has to be lived with.
(e) The Enlarged Board's conclusion is in line with the earlier conclusions which it has reached about the interpretation of Article 101(3) EPC having regard to:
(i) The cases G 9/91 and G 10/91 (point 17, above);
(ii) the context of the article and the object and purpose of the EPC as implemented by it (point 62, above); and
(iii) the travaux prĂ©paratoires (points 67, 69 and 71, above).
(f) In particular the Enlarged Board finds it significant that with the implementation of EPC 2000 no change was made in what became Article 101(3) EPC relating to the present issue. The legislator must be taken to have been aware of what was the established jurisprudence of the Boards of Appeal up to and including 1999, when the preparatory work was finalised.
(g) It should be emphasised that the present referral is not concerned with whether an opponent has the right to argue that a claim is unclear or (in effect) lacks support. Thus, for example, just as the uncertain boundaries of a claim or lack of support may play a role when arguing the various grounds for opposition in cases where the patent as granted is defended, so may they do so following any amendment. Methods are therefore available to both the EPO and national courts to mitigate the effects of lack of compliance with Article 84 EPC, both in relation to an unamended patent and one which has been amended (see points 55 and 59, above, respectively). The Enlarged Board accepts that it is not optimal that there may be granted claims, even after amendment, which do not comply with Article 84 EPC but it cannot be ignored that the legislator has deliberately chosen not to make Article 84 EPC a ground for opposition, or for revocation or nullity in national proceedings.
(h) In this respect, the Enlarged Board also wishes to reiterate what was said in G 9/91 and G 10/91 (point 16 of the Reasons), endorsing the practice of the Opposition Division in raising ex officio a ground for opposition not covered by the statement of grounds for opposition, this practice being "aimed at avoiding the maintenance of European patents which are invalid". Thus where in relation to an amended claim and in the light of its apparent non-compliance with Article 84 EPC, prima facie there are clear reasons to believe that one or more grounds for opposition are relevant and would in whole or in part prejudice the maintenance of the European patent, there is a route to either not admitting or not allowing the request for amendment. The Enlarged Board of course acknowledges that this consideration is not relevant where none of the grounds for opposition comes into play in such a case or in the case of amendments made in the course of appeal proceedings (unless the proprietor consents).
(i) The Enlarged Board does not find the various counter-arguments persuasive. The Enlarged Board of course accepts that ideally only valid patents should be granted and maintained. However, the Enlarged Board cannot go as far as the submission (point VI(b), above), citing G 1/84 (OJ EPO 1985, 299), at point 3 of the Reasons, that "the elaborate provisions in the EPC for substantive examination and opposition are designed to ensure that only valid European patents should be granted and maintained in force" by the EPO, not least because the Enlarged Board added "... so far as it lies within the power of the European Patent Office to achieve this". Opposition proceedings are not designed as a procedure for generally amending (or revoking) patents which contain any kind of defect. This is amply demonstrated by the fact that failure to satisfy the requirements of Article 84 EPC is not a ground for opposition. As has been said many times (e.g., G 1/84, point 9 of the Reasons), opposition proceedings are not designed to be a continuation of examination proceedings.
(j) The same applies to submissions to the effect that once it is established that a ground for opposition prejudices the maintenance of a patent, so that an amendment becomes appropriate, a door is opened which then enables the EPO in cases where third parties have an interest to scrutinise the patent thoroughly for compliance with all the requirements of the EPC. While the fact that there are opposition proceedings may indicate that the patent is important to the parties, opposition proceedings are not examination proceedings.
(k) As to the suggested solution that examination for clarity is permissible when the amendment brings a previously dormant lack of clarity out into the light (or equivalent formulations), it seems that this could mean that such examination is permissible when:
(i) By writing out the dependent claim for the first time in full, attention is drawn to an inconsistency between the originally granted claims which had not previously been observed, for example because of complex interdependencies; and/or
(ii) It becomes important for the first time to know the precise limits of a claim because of newly cited prior art.
In both cases this amounts to little more than saying that on any amendment a claim may be examined for clarity when its meaning becomes critical. Such a construction is not supported by the actual wording of Article 101(3) EPC, which does not indicate the existence of such a power. Further, to use a test based on an assumption that the lack of clarity was not previously noticed (or equivalent formulations) appears to the Enlarged Board to be arbitrary, not least since it often will not be known whether the Examining Division did consider Article 84 EPC but took the view that the particular claim was unobjectionable. Under the practice of the EPO, a decision to grant is not accompanied by a reasoned decision that the application satisfies all the requirements of the EPC.
(l) Formulations whereby the examination for lack of clarity is to be carried out on a discretionary basis, and/or only in exceptional cases are again not supported by the actual wording of Article 101(3) EPC. Such a conclusion would also result in an arbitrary system whereby it could never be predicted by parties with any confidence what the result of the opposition proceedings would be if the proprietor chooses to amend the patent.

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.

G.(iii) Type A amendments

82. As explained in point 3, above, this type of amendment can be broken down into sub-types. 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 for Type B amendments.

83. Although not the subject of the referred questions, the same result follows, for the same reasons, in the case of:
(i) Amendments consisting of deletion of wording from a granted claim (whether independent or dependent), thereby narrowing its scope, but leaving intact a pre-existing lack of compliance with Article 84 EPC (as exemplified by T 301/87).
(ii) Deletion of optional features from a granted claim (whether independent or dependent).

84. As regards Type A(ii) amendments (features disconnected by the amendment from other features of the dependent claim), it has never been doubted that where an alleged lack of compliance with Article 84 EPC is introduced by such an amendment, the claim may be examined for such compliance. Where the alleged lack of compliance has not been introduced by the amendment, the Enlarged Board considers that the question should be answered in the same way as for Type B amendments. This is not only for reasons of uniformity and consistency, but because it is difficult to see how a logically consistent yet different answer could be formulated.

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.

G.(iv) Final remarks

86. The above answers also deal with referred questions 2, 3 and 4.

87. The Enlarged Board thus approves the conventional line of jurisprudence as exemplified by T 301/87 (section E(a), points 18 to 26, above), and disapproves the line of jurisprudence as exemplified by T 472/88 (explained in section E(b), points 27 to 29, above), and also the line of "diverging" jurisprudence (as exemplified in the cases set out in section E(c), points 30 to 43, above).


Order

For these reasons it is decided that:
The questions referred to the Enlarged Board of Appeal are answered as follows:
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.



This decision has European Case Law Identifier: ECLI:EP:BA:2015:G000314.20150324. The whole decision can be found here. The file wrapper can be found here. Photo obtained from freedigitalphotos.net.

9 comments :

  1. This latest decision from the EBA is probably one of the most disappointing in EPO history. It is highly unfortunate that clarity cannot be reassessed in respect of a modification consisting in the mere combination of claims as granted. Clarity of dependent claims is often overlooked during examination and it is not uncommon to find claims in granted patents that objectively suffer from clarity issues. Not being in a position to re-examine the clarity of a modification on the mere ground that non-compliance with Article 84 EPC was already present in the claims as granted is less than optimal to say the least. Really disappointing.

    ReplyDelete
    Replies
    1. I consider the opinion to be well written, carefully argued and respecting the intent of the legislator.

      The legislator has removed clarity from the opposition grounds to streamline the proceedings. Indeed, clarity is a less optimal criterion for inter partes proceedings as it will invariably lead to a yes-no quarrel between opponent and proprietor. Worse it will force the opposition division to take a stance on clarity before getting to novelty/inventive step.

      As the enlarged board notes there are a number of other grounds in which clarity consideration may play a role.

      Delete
    2. Hi Ronald,

      Did you read the decision before posting your comment?
      The EBA addresses in a lot of detail and very extensive argued why clarity cannot be reassessed and should not be reassable in opposition, by a very thorough discussion of the legal history and the deliberate choices that the legislator made - also when amending the EPC to EPC2000.

      So, in my view, you donot do justice at all to this very thorough and useful analysis of the Enlarged Board

      Delete
    3. I did Roel :)
      I did also read the various amicus curiae that have been submitted to the EBA and I do believe that a number of EPO representatives (like me) did have the hope that the EBA might follow the divergent view expressed e.g. in T 0459/09.
      Clarity is no ground of opposition. That's a fact and should remain like this. Not being in a position to re-assess clarity when it comes to examining amended claims submitted in the context of opposition proceedings - irrespective of the nature of the modification - is not optimal (as admitted by the EBA BTW…).
      I do reiterate my (humble) opinion that this decision is disappointing.

      Delete
  2. I am very enthusiastic about this decision. I haven't read it in detail yet, but I definitely get a sense that the EBoA wants less procedural nit-picking in opposition. Coming from EPO that is quite refreshing.

    Personally, I would like to see opposition procedures more as a clash between experts in the field about novelty and inventive step (and perhaps sufficiency) of the claims. The near endless debates about extension of subject matter are bad enough already. Since unclear claims are interpreted (as they should) according the broadest reasonable interpretation and are thus more vulnerable to novelty and inventive step attacks, there's still plenty of incentive for applicants to draft clear claims.

    On the one hand this no-nonsense approach gives me hope for the coming poisonous divisonal/priority decision (I'm in the "partial priority should fix everything" camp). On the other hand, the EBoA's approach to follow the letter of the law also worries me. There's little room then to say that Art 54(3) does not apply to your own priority/divisional applications.

    Also: this was lightning speed for the EBoA? Back in November we were still drafting Amicus letters (which I'm glad the EBoA did not follow, BTW).

    ReplyDelete
  3. This statement on page 87 of the decision says it all:
    "The Enlarged Board accepts that it is not optimal that there may be granted claims, even after amendment, which do not comply with Article 84 EPC but it cannot be ignored that the legislator has deliberately chosen not to make Article 84 EPC a ground for opposition, or for revocation or nullity in national proceedings."

    What about legal certainty then ?

    Did I miss something ? Was the Referral to the EBA in any way directed to making Article 84 EPC a ground of opposition ? It was my understanding that we were rather talking about Article 101(3) EPC, not Article 100 EPC...

    ReplyDelete
    Replies
    1. Why would legal certainty be at stake? The judge will for any claim, clear or not, make its own judgment as to scope of protection and infringement - (s)he will do his/her own claim interpretation in which all features of the claim, in the light of the description, claims and drawings and taking into account equivalents (Art. 96 EPC and Protocol). If you ever considered even valid claims to define the scope of protection in a unique manner, you are much to naive....

      MrWiseBoard

      Delete
    2. There is always room for interpretation of any given claim. That's pretty obvious and I have experienced that myself in various infringements cases as a matter of fact ;)

      Legal certainty is however an essential element of the system and one cannot assume that all claims of all patents granted by the EPO will go through the rigorous (or not so rigorous) process of claim construction by a Judge. Do we now want all patents granted by the EPO to go through this complex and costly process ? Evidently not.

      Third parties do need to have some ability to understand the scope of a claim, without this necessitating the valuable input of a Judge. In that context, clarity is essential, or at least quite helpful.

      It IS naive to believe that legal certainty is not at stake.

      How can interpretation of a claim be determined if the claim per se is unclear ?

      How can this be in any way satisfactory from the point of view of legal certainty ?

      How can this be in any way better than having the Opposition Division or Board of Appeal re-assess clarity during opposition proceedings and invite the Patentee to clarify the scope of the claim ?

      How can this be optimal ? It is NOT and the EBA explicitly accepts it.

      Delete
    3. I'm totally with the eBoA when they say: Opposition is not continued Examination.

      Any patent system (not just EPO) is rife with legal uncertainty due to unclear claims.

      Deal with it.

      Bogging down opposition procedures (which only happen in a small percentage of granted cases) with clarity discussions does not address this legal certainty problem properly, but it would put patent holders at a huge disadvantage because they would have to fight clarity battles again, but now hampered by A.123(3) as well. F*ck that!

      Frankly, I'm amazed that this G3/14 gets so little love from the patent attorney community. In my opinion, which happens to be right, the BoA took exactly the right decision for, even more amazing, the right reasons.

      -- Newly converted EBoA fanboy

      Delete

Statcounter