Saturday, 28 March 2015

G 3/14 (2) - EPC requires all dependent claims to be examined on clarity too

We discussed the main answers given by the Enlarged Board in G 3/14 to the referred questions in yesterday's post "G 3/14 - is the clarity issue newly introduced or not?". Today, we give attention one of the analyses underlying the decision: must all claims be examined on clarity by the Examining Division, also all dependent claims? The Enlarged Board seems to answer this with a very clear "yes".

Background / Summary of Facts and Submissions
I. During the appeal proceedings in the referring case (T 373/12) the proprietor filed an auxiliary request for maintenance of the patent which consisted of a combination of granted claim 1 and granted dependent claim 3. This granted dependent claim contained a lack of clarity, namely that the claimed article was coated "over substantially all its surface area". By its decision dated 2 April 2014 and in the light of what was seen as conflicting jurisprudence of the Boards of Appeal, the Board referred the following questions to the Enlarged Board of Appeal under Article 112 EPC (hereafter: "the referred questions"):

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 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 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?
II. In deciding to refer these questions, the referring Board said: [...]
III. In response to an invitation from the Enlarged Board, submissions, comments and third party (amicus curiae) briefs were filed respectively by: [...]
IV. Oral proceedings were not requested by either party. The written submissions, summarised below, were divided between those arguing for the "conventional" restricted answer to the referred questions (headed by the proprietor) and those arguing, in differing degrees, for a wider power to examine an amended patent for clarity (headed by the opponent).
V. Submissions generally in favour of the conventional, restricted approach
V.(a) The proprietor
- The statement in T 1459/05 that the number of claims in recent years had grown (so that they were not and could not all be examined) was made before the present punitive additional regime of claim fees was established. Nowadays the number of patents with claims in excess of 15 is relatively low. In fact, in the present referral case only two independent and seven dependent claims were granted.
V.(b) Amicus curiae briefs
V.(b)(i) FICPI
- The legal framework for answering the questions is wider than that suggested by the referring Board.
- A granted dependent claim and its granted independent claim each have the character of a legal norm. A dependent claim is essentially the result of the implementation of the conciseness requirement of Article 84 EPC as implemented by Rule 43(4) EPC. Any combination of granted claims merely represents the cancellation of a subset of granted claims and a restriction to the remaining granted claims. As a result, in such a case there is no room for an examination of clarity, whether of the procedural request or by analogous application of Article 84 EPC. If that amended claim could then be examined for clarity, then this would in effect be to accept Article 84 EPC as a ground for opposition. The meaning of the claim has to be determined by interpretation.
V.(b)(ii) Other amicus curiae briefs
- Claims should be so formulated that they define the matter for which protection is sought. The claims and description must or should correspond to each other such that the description supports the claims.
- A claim is unclear when for the skilled person at least two different meanings are possible, so that even when using the description and drawings as an aid he cannot tell which meaning is intended.
- The use of the description in the examination of the claims is required because Article 84 EPC requires a clear and concise formulation of the claims, which means that the explanation in the description serves to help understand the claims, while at the same time the description must serve the function of supporting the claims.
- Claims which are unclear are not allowed in examination proceedings.
- If a claim is unclear, national courts will or may interpret the claim to the advantage of the defendant.
- For the German courts, a granted patent has the character of a legal norm. This remains the case even when the claim is unclear or interpretation is difficult.
- It is not possible to draw a dividing line between clear and unclear claims.
VI. Submissions generally in favour of a wider power
VI.(b) The President
- The requirements of Article 84 EPC serve the purpose of ensuring that the public is not left in any doubt as to what subject matter is covered by a particular claim. It thus serves the paramount importance of legal certainty.
- Independent claims must contain the essential features of the invention; dependent claims contain particular embodiments. The requirement of clarity applies to both types of claims.
- Clarity or lack of support problems that were already present in the claims as granted must be objected to during examination proceedings under Article 94(1) EPC (sic). [...]
- Clarity of the claims is of importance for the public and for the patentee. It is a prerequisite of legal certainty and avoids costly national infringement and revocation proceedings. Opposition proceedings are centralised, cost-effective proceedings in contrast to individual national nullity / infringement proceedings.
- The importance of clarity is underlined by the proposal to introduce clarity as a ground for opposition and revocation in the preparation for the EPC 1973. It must also be borne in mind that other patent systems have such grounds for opposition or revocation. The fact that it was not introduced has been qualified as a "congenital defect of the EPC". The need for procedural efficiency in opposition proceedings should not override the necessity that the patent as amended and the invention to which it relates have to meet the requirements of Article 84 EPC.
- The further requirement of Article 84 EPC that the description should support the alternatives falling within the scope of the claims reflects the general principle that the claims should correspond to the technical contribution to the art (T 409/91). The repeated attempts to introduce lack of support as a ground of opposition and revocation show that a practical need is seen to make objections under Article 84 EPC in case the claims are not sufficiently supported by the description.
VI.(c) Amicus curiae briefs
VI.(c)(i) General policy considerations
- The clarity of claims is important for the patentee and third parties.
- It is particularly important for the EPO to require clarity at every step of the proceedings because Article 138 EPC does not permit revocation for lack of clarity by national courts, and appropriate procedures should therefore be adopted.
- Of three policy considerations relevant to the referred questions, namely (a) limiting obstacles to obtaining a patent, (b) avoiding greater complexity in opposition proceedings and (c) assuring the quality of European patents, consideration (c) is paramount. A patent with some possible clarity defects is worth more than no patent at all (especially in Europe, where clarity is not directly reviewable in national revocation proceedings).
- In the interests of undistorted competition, invalid intellectual property rights should be eliminated.
VI.(c)(ii) Examination proceedings
- There needs to be a sliding scale in terms of the strictness of the approach to clarity. For those technical features which are of decisive importance, a level of clarity is needed which is adequate for the task of distinguishing the claimed subject matter from that which is not claimed. Otherwise, a lesser degree of clarity can be tolerated. Fair protection for the inventor should be balanced against legal certainty for the public.
- If during examination an independent claim is found to be, e.g. novel, it does not matter (for the purposes of novelty) that a dependent claim is unclear: it will still be new. Only if other prior art is cited during opposition proceedings may it then become critical whether the dependent claim clearly delineates the subject matter over this prior art. Indeed it may not have been possible to identify the lack of clarity during the examination proceedings, i.e. it will only have become apparent in the light of the newly cited prior art.
- The resources of the Examining Division to examine dependent claims are finite, and they must be prioritised. Independent claims will inevitably receive greater attention than dependent claims.
- Where in examination proceedings there is doubt about the clarity of a claim, it is reasonable for an Examiner to give the benefit of the doubt to the applicant.
- It is unlikely that giving greater attention to the clarity of dependent claims in examination would improve the quality of the granting process as a whole. In any event it is now too late to affect granted patents.
- In reality, only the clarity of independent claims is strictly examined during examination proceedings. If at all, the wording of dependent claims in isolation may be examined for clarity but not taken in combination with the independent claim.
- It is not realistic to think that claims with multiple dependencies are examined for clarity in examination proceedings.
VI.(c)(iii) Opposition proceedings
- The assumption is that a granted patent meets all the requirements of the EPC, and thus that all dependent claims meet the requirements of Article 84 EPC. The onus of proof should therefore be on an opponent to make a prima facie case that the incorporation of all the features of a dependent claim into an independent claim does not meet the requirements of Article 84 EPC. In this respect, merely pointing out that an amendment has been made should not be regarded as making out a prima facie case.
Reasons for the decision
A. Admissibility of the referral
1. The referring decision draws attention to the divergence in the jurisprudence of the Boards of Appeal that has emerged, something which is confirmed by the submissions of the parties, the comments of the President and the amicus curiae briefs, and is discussed further below. It is also not in doubt that the referred questions raise a point of law of fundamental importance, since the answers will have an impact beyond the specific case at hand and will be relevant to a large number of similar cases. See G 1/12 (to be published in OJ EPO), points 11 and 12 of the Reasons. An answer to at least some of the referred questions is also required to enable the referring Board to reach a decision on the appeal before it. The referral is therefore admissible.
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.
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
11. The Enlarged Board will return to the issue of interpretation but will first consider how the issue has been dealt with in the decisions of the Boards of Appeal.
D. The existing jurisprudence of the Enlarged Board of Appeal
E. The existing jurisprudence of the Technical Boards of Appeal
E.(i) The "conventional" approach
19. This case and the next discussed (T 227/88) can be taken as the origin of what the Enlarged Board will refer to as the "conventional" approach to the current issue, in particular the test of whether the amendment introduces any contravention of Article 84 EPC and the principle that Article 102(3) EPC 1973, now Article 101(3) EPC, does not allow objections to be based upon Article 84 EPC if such objections do not arise out of the amendments made. However, although the Board in T 301/87 had earlier pointed out the distinction between Articles 102(1), (2) and (3) EPC 1973, the decision does not really explain why Article 102(3) EPC 1973 did not "allow" Article 84 EPC objections if they do not arise out of the amendments made. There is also a problem with the only justification given in the decision because, if the amendment saves the patent from revocation, it is hardly appropriate to describe it as "minor", if this is to be taken as meaning unimportant. Again, an argument that any other conclusion would be "somewhat absurd", although a useful indication that the conclusion is correct, is itself hardly a satisfactory juridical basis for a decision.
20. In T 301/87 the earlier decision in T 227/88 (OJ EPO 1990, 292) was cited, in which amended claim 1 was a combination of granted claims 1, 2, 3 and 4, with deletion of various alternatives. The Board in T 227/88 said:
"3. The main claim having been amended, it is necessary to consider its validity in accordance with Article 102(3) EPC [1973]. In all cases in which amendments are requested by the patentee and are considered to be free from objection under Article 123(2) EPC, Article 102(3) EPC [1973] confers upon the Opposition Division and the Board of Appeal jurisdiction, and thus the power, to decide upon the validity of the patent as amended in the light of the requirements of the Convention as a whole. This jurisdiction is thus wider than the jurisdiction conferred by Articles 102(1) and (2) EPC [1973], which expressly limit jurisdiction to the grounds for opposition mentioned in Article 100 EPC. When substantive amendments are made to a patent within the extent to which the patent is opposed, both instances have the power to deal with grounds and issues arising from those amendments …
4. The abovementioned power must, however, be exercised in a manner that takes full account of the conflicting interests of two relevant sections of the patent community, namely, the patentee's need to have an opposition proceedings decided as swiftly as the procedure allows, and the certainty of other users or potential users of the inventions, the subject of European patents, that such patents are legally valid and enforceable."
26. In many cases which have followed this approach and in which the lack of clarity was already present in the granted claim, the amended claim has then had to be interpreted, if appropriate with the help of the description (see, e.g., T 698/99). This may result in it being given a broad meaning (see, e.g., T 2049/07, point 3 of the Reasons, and the further cases cited there) or in it being found to be meaningless (see, e.g., T 626/91, where the Opposition Division had come to this view), with the result that the claim may not be apt to distinguish the subject matter over the prior art or establish an inventive step. Alternatively, the lack of clarity in the amended claim may mean that the skilled person may not know how to carry out the invention (Article 83 EPC - see, e.g., T 626/91, point 3.2 of the Reasons).
E.(ii) Decisions interpreting "arising out of"
27. The Enlarged Board considers that the meaning of the expression "arising" or "arise out of" as used in T 301/87 and T 227/88 was clear in the context of those cases: a lack of clarity "arises" from an amendment when it did not exist before, so that the effect of the amendment is to introduce or give rise to a lack of clarity for the first time. Nevertheless, the expression has subsequently been interpreted in a wider sense, as follows.
29. This interpretation has been applied in a number of subsequent cases, using a variety of wording, for example T 681/00 and T 1484/07 (clarity problem "concealed" in dependent claim now "highlighted" and made "visible"). In the Enlarged Board's view, development of the jurisprudence of the Boards of Appeal in this way is not legitimate. It is of course appropriate to use a dictionary when interpreting a statute to help elucidate its meaning, but statements in a decision of a court using ordinary words do not require further interpretation in this way: they are to be understood in their context. Given the facts of those cases (see points 18 and 20, above) the Enlarged Board does not consider that the Boards there intended these words to have the expanded meaning given to them in T 472/88 and the later cases which followed this approach. In any event, it is unclear to the Enlarged Board what the test developed on the basis of this construction actually amounts to or when precisely an amendment can be said to bring into notice, highlight or focus attention on a previously existing ambiguity (see further, point 80(k), below). This line of cases has not generally been regarded as belonging to a diverging line of cases (although it was identified as such in T 1577/10).
E.(iii) The "diverging" cases
30. In T 1459/05 granted claim 1 was combined with dependent claim 4 in an attempt to delimit the claim over the prior art by means of the feature in granted claim 4 (this feature then being alleged to be unclear). Having referred to the established jurisprudence of the Boards to the effect that examination for clarity was not permissible in the case of a combination of granted claims, the Board said that it exceptionally could not follow this line because the added feature was all that might distinguish the subject matter of the amended claim from the cited prior art but it was so unclear that for the skilled person the difference was not apparent or could not be determined with reasonable certainty (see point 4.3.4 of the Reasons).
31. As justification for this approach, the Board said that the previous jurisprudence had proceeded on the assumption that the Examination Division examined all dependent claims for clarity, including the various interdependencies, and there was no power in opposition proceedings to carry out this exercise for the first time or to repeat it. In addition, the basis on which the earlier jurisprudence had been grounded had altered, not least because the number of claims in applications had steadily and rapidly increased, so that it was questionable whether in a complex case dependent claims could be adequately examined for clarity. The Board therefore considered that it had a discretion, which it could exercise on a case-to-case basis ("von Fall zu Fall"), to examine such combined claims for clarity, particularly where otherwise a further examination of the amended claims for, e.g., novelty or inventive step would be considerably more difficult or even not lead to a useful result. See point 4.3.5 of the Reasons.
[Note from the blog author: before grant, any third party could draw the examiner's attention to lack of clarity issues by filing third party observations under Art.115 - the online form makes explicit that clarity issues can also be a subject of Art. 115 observations. So, even though there is no possibility to challenge clarity -as to the independent and dependent claims as granted- after grant, third parties do have a possibility before grant, until far in the examination procedure, even after a Rule 71(3) communication was issued and even until some time after the applicant approved the text intended for grant.] 
32. It does not appear to the Enlarged Board that the earlier jurisprudence (see Section E(a), points 18 to 26, above) did in fact rest on the assumption that the practice of the Examining Division was to systematically examine all dependent claims, with all their interdependencies. It was certainly not so stated in T 301/87 or T 227/88, the sources of this line of jurisprudence. Further, while the Enlarged Board is aware that there had been a steadily increasing number of claims in applications (see further, point 33, below) it does not necessarily follow that the examination of all claims had thereby become unrealistic. In any event it is not clear to the Enlarged Board that there had been any change in practice by the Examination Division as a result (see further the comments in point 49, below). As an aside, the Enlarged Board would also point out that the claims in T 1459/05 do not appear as a whole to have been technically or linguistically particularly complicated, and consisted only of two independent claims, with five and two dependent claims respectively.
33. In any event, in respect of an application filed on or after 1 April 2009 (and thus after the date of the decision in T 1459/05, namely 21 February 2008), claims fees were substantially increased to €EIUR 225 for the 16th and each subsequent claim up to the limit of 50, and to €EUR 555 for the 51st and each subsequent claim (see Article 2, item 15 of the Rules relating to Fees, as amended by decision of the Administrative Council CA/D 15/07 of 14 December 2007 (OJ EPO 2008, 10)). The previous level of claims fees had been € 45 for the 11th and each subsequent claim. The background to this steep increase in claims fees is set out in CA/44/07 Rev. 1 e, (points 13 – 16). There it is explained that the number of claims (independent and dependent) in European patent applications had been rising substantially over the previous years and the existing claims fee arrangement no longer reflected the extra work involved in handling applications with an above-average number of claims. The new claims fee structure was intended to steer applicants' behaviour via fee incentives and disincentives, discouraging applicants from submitting applications with a large number of claims. The new measure was expected to reduce the number of claims presented for search and examination and at the same time provide the necessary financial compensation for the extra work of examiners in handling applications with a large number of claims. [Note from the blog editor: this is an interesting observation as the number of points that examiners get does not depend on the number of claims of an application, but just on the number of applications for which a search is done]. The Enlarged Board has no reason to believe that this measure has not succeeded in its purpose (a point made by the proprietor in the present case). As was said in J 9/84 (OJ EPO 1985, 233), point 4 of the Reasons:
"… the main purpose of Rule 31 EPC 1973 is to induce the applicant to limit the protection sought to a certain number of claims, in the first instance for the purposes of the European search."
The same point is made in J 6/96 (point 7 of the Reasons) and J 6/12 (point 7 of the Reasons).
34. More importantly, it is not clear to the Enlarged Board what is the legal basis for the discretion which was said in T 1459/05 to be exercisable on a case-by-case basis to examine amended claims for clarity.
35. The Enlarged Board would also comment that if the Board in T 1459/05 was unable to understand how the subject matter of the amended claim could be distinguished over the prior art, it was presumably open to the Board to find that the amended claim was not distinguishable and thus not novel. Indeed it is to be noted that, having decided that the claim could be examined for clarity, the Board did not in fact disallow the request for non-compliance with Article 84 EPC but decided that the relevant feature was indeed vague and unclear, and therefore that it could not define any material or clear difference over the prior art or any necessary difference for the examination of novelty and inventive step ("so dass dieses Merkmal auch keinen wesentlichen, eindeutigen und für die Weiterprüfung unter Artikel 54 und 56 EPÜ notwendigen Unterschied gegenüber E1 definieren kann."). See point 4.3.7 of the Reasons.
36. The decision has been followed a number of times, for example in T 1440/08, where granted claim 1 was combined with dependent claims 6, 7 and 8, a particular feature in granted claim 1 being inconsistent with another feature in granted dependent claim 6. The Board said that clarity could be looked at because of the inconsistent features which the amendment had brought into light ("unter einem neuen Blickwinkel erscheint"), applying cases such as T 472/88, T 420/00 and T 681/00, particularly when the unclear feature was relevant for examination of novelty and inventive step, following T 1459/05.
37. Other decisions have distinguished T 1459/05, taking the line that the exceptional situation described there did not apply on the facts of the case, i.e., the introduction of the additional feature by a combination of claims had not by itself made further examination for clarity difficult or impractical. See, for example, T 1033/09, point 9.2 of the Reasons.
38. The case has also been subject to some critical comment in other cases. Thus in T 1855/07, the Board was asked to refer a question to the Enlarged Board on the grounds of the diverging jurisprudence (which the Board refused to do). As to T 1459/05, the Board said the reasoning was problematic from a logical point of view and difficult to understand, and the point that lack of clarity was not a ground for opposition had not been addressed by the Board. In T 59/10 the Board, commenting on T 1459/05, made the similar point that it is not the "general practice" which prohibits a review under Article 84 EPC, but rather that Article 84 EPC is not a ground for opposition within the meaning of Article 100 EPC.
39. In T 656/07, granted claim 1 was combined with a dependent claim, granted claim 1 already containing an unclear feature. It appears that further lack of clarity was introduced as a result of the amendment. Taking the view that a lack of clarity arises out of an amendment when the amendment brings into notice an ambiguity that has existed all along, this was held to be the position in the case before the Board with the aggravating circumstance that the lack of clarity already present in claim 1 had been extended and reinforced by the amendment. The Board said:
"In the opinion of this Board it cannot be stated that there is a general rule in the jurisprudence that a combination of granted claims should not be challenged for lack of clarity."
"... whenever amendments are requested by a patentee in the course of opposition proceedings, Article 101(3)(a) EPC (former 102(3) EPC 1973) confers upon both the opposition division and the Boards of Appeal jurisdiction and thus the power to apply the whole of the EPC including Article 84."
The Board held the amendments which had been introduced substantially affected the clarity of the claim as a whole, since its subject-matter was not clearly defined, making it impossible to compare the subject matter of the claim with the state of the art and to proceed further with the substantive examination of the claim.
40. Again, T 656/07 has been distinguished in later cases, e.g., T 1659/07, and in T 59/10 the Board considered that T 656/07 was consistent with the older jurisprudence because the unclear feature, although present in the granted claims, was present in another combination (see point 2.2 of the Reasons). The decision was thus considered to follow the conventional jurisprudence.
41. T 459/09 is the most far-reaching of the diverging cases. Granted claim 1 was combined with its dependent claim 14. The Board said:
"4.1.6. ... the present Board holds that clarity of an amended independent claim should, in principle, be examined, even if the amendment only consists in a mere literal combination of claims of the patent as granted. Any other approach would indeed 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.
In fact, the wording of Article 101(3) EPC qualifies neither the nature nor the scope of the amendments. After amendment of any kind, the opposition division may no longer decide to reject the opposition, as would have been possible, had, for example, a clarity objection been raised as the sole ground for opposition. Instead, the opposition division may only decide either to maintain the patent in amended form or to revoke the patent. Their decision is taken on the basis of whether the patent and the invention to which it relates meet the requirements of the EPC. Article 101(3) EPC indeed defines in absolute terms that the requirements of the EPC shall be considered when amendments are made by the proprietor of the patent during opposition proceedings. Therefore, the term "amendments" in Article 101(3) EPC should not be construed narrowly and, irrespective of the manner in which the patent is modified, the amended patent should be subjected to an examination to ensure compliance with all requirements of the EPC. This approach is in agreement with G 9/91 ... .
4.1.7 In this context, the Board notes that an amendment consisting of the incorporation of a technically meaningful feature in an independent claim of a granted patent does indeed represent an attempt to overcome an objection within the framework of Article 100 EPC against the patent as granted, the amendment having to be occasioned by a ground for opposition (Rule 80 EPC). It follows that such an amendment is of a substantial nature and will normally have an effect on the substantive examination, such as for example on the assessment of novelty and inventive step."
The Board concluded that any amendment which is intended to overcome an objection within the framework of Article 100 EPC would justify an unrestricted exercise of the examination power derivable from Article 101(3) EPC, irrespective of whether the amendment arose from the combination of a feature from the description with an independent claim, or from the literal combination of claims of the granted patent. The amended patent should thus normally be examined so as to establish whether it met all the requirements of the EPC. This rule might, however, be deviated from in particular cases, to be judged on a case-by-case basis.
42. T 409/10 is cited by the referring Board as being diverging on the basis of the statement (point 3.1 of the Reasons) that:
"... any amendment that can be qualified as being of a substantial nature would in principle justify an unrestricted exercise of the examination power derivable from Article 101(3) EPC, including the examination of clarity, independently of whether the amendment arises from the incorporation of a feature from the description or from the combination of claims of the granted patent."
43. In T 493/10, granted claim 1 was amended by taking features from parts of dependent claims 6 and 7, i.e., the amendment was not a simple combination of granted claims 1, 6 and 7. The feature taken from granted claim 7 was alleged to be unclear. It was held that the jurisprudence (T 1459/05, T 656/07, T 1484/07 and T 1440/08) showed that clarity could be examined even in the case of a combination of granted claims where the incorporation of a feature from a dependent granted claim revealed a lack of clarity which had been smouldering ("couvant") all along in a dependent claim.
F. The interpretation of Article 101(3) EPC
G. The answers to the referred questions
G.(i) Preliminary matters
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).
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 (pdf). The file wrapper can be found here. Figure taken from the European search opinion of the underlying case


  1. The provisions of Article 84 EPC are obviously "universal" (they do apply to all claims), but there is no way that the EPO can guarantee with absolute certainty that clarity will be examined thoroughly and exhaustively for all claims during examination proceedings. Clarity issues in dependent claims may actually only become apparent when the features of such dependent claims become central to the discussion, especially in the context of inter partes proceedings, namely when these features are incorporated into an independent claim. In that respect, I still struggle to understand why the EBA did not share the view expressed by many (including the EPO President) that compliance with the provisions of Article 84 EPC should be allowed to be examined irrespective of the type of claim amendments. It would have been far more optimal to allow unrestricted re-assessment of the clarity of amended claims during opposition proceedings. That would be in the best interest of the system, especially in order to avoid complications in future infringement proceedings, where proper claim construction is so essential. Let's not forget that errors are human. Examiners can and do make errors. Practitioners can and do make errors. Opposition Divisions can and do make errors. And the list does not stop there. In that respect, I do sincerely believe that it is important to allow unrestricted re-assessment during opposition proceedings of the conformity of claim amendments with the provisions of the EPC. This includes (or rather should have included…) compliance with the provisions of Article 84 EPC. This won't be the case in view of the EBA's decision… for some time at least.
    I do regret that the EBA ultimately took the view it took…

  2. The main consideration of the EBA seems to be that examination of clarity in opposition is only possible if there is a legal basis for it. Rule of law, etc.

    The only legal basis would be Art. 101(3) EPC. It is certainly possible to read this provision as allowing a full re-examination of the patent once it has been amended. But this would necessarily also open the door to e.g. novelty and inventive step attacks even if the patent had not been opposed on those grounds. It would also mean that if only one independent claim is opposed, after amendment of the patent (e.g. deletion of that claim), the other independent claims become open to attack as well. In short, there is an abundance of case law that clearly contradicts this reading of Art. 101(3) EPC.

    Now, what is the alternative? I don't see much else than limiting Art. 84 objections (and for that matter, any other type of objection with the exception of those based on admitted grounds of opposition) to those that arise out of the amendments made, i.e. those objections that could not have been raised against the patent as granted but can be raised against the patent as amended.

    The argument that it should be possible to raise a clarity objection if the clarity problem was previously "hidden" and "only became apparent" after the amendment amounts to saying that it should be possible to raise a clarity objection if the problem was (excusably) overlooked in the grant proceedings. But the point of clarity not being a ground of opposition is that a clarity problem that was overlooked pre-grant cannot be raised post-grant. I don't see why excusability of the ED's oversight should make that different. And what a can of arbitrary worms that would open, if the OD had to decide for each and every clarity problem whether it stemmed from an "excusable oversight" by the ED...

    Also remember that the EBA's task is to clarify points of law. It is not the EBA's task to decide on matters of policy. At most, the EBA may plug a hole. If clarity should become a ground of opposition, then it is for the legislator to include it in the EPC. (The legislator had this chance in 2000, but left the law unchanged.)

    As regards policy, what would have happened if the EBA had opted for the other interpretation of Art. 101(3) EPC? I'm afraid pre-grant examination would quickly have been limited to only the independent claims.

    1. It is less than satisfactory however not to be in a position to re-assess clarity when it comes to examining a new independent claim submitted during opposition proceedings that results from a direct combination of granted claims on the mere ground that the lack of clarity was not introduced by the amendment and was already present in the granted claims. Clarity is essential to a proper construction of the claimed subject-matter. We at least need some proper understanding of what is claimed prior to undertaking the assessment of novelty and inventive step, don't we ?

      Objectively, what does prevent an Opposition Division or a Board of Appeal to re-examine clarity during opposition proceedings in a situation where the amendment of a claim consists in the mere combination of granted claims ?

      Is it a satisfactory situation not to be in a position to re-assess clarity when this issue may be of major importance to the discussion ?

      Is it satisfactory for the EPO to possibly maintain patents in amended form with claims that could suffer from potentially serious clarity issues ?

      Is this satisfactory from the point of view of legal certainty for third parties ?

    2. Objectively, what does prevent an Opposition Division or a Board of Appeal to re-examine clarity during opposition proceedings in a situation where the amendment of a claim consists in the mere combination of granted claims ?

      The rule of law. They have no competence to examine clarity, or at least not to revoke on the ground of lack of clarity. (Of course the EBA could have decided differently, but what should it have decided? Fully reopening examination after the slightest amendment would be against long-standing case law and very likely against the will of both the EPC 1973 and the EPC 2000 legislators. Anything in between seems problematic as well, as the competence to examine clarity would then rest on a judgment of what the ED could have done (given the time it has? its production targets?).)

      It might not be satisfactory, but neither is the situation in which already the granted independent claim is a big mess. But Art. 84 EPC is not a ground of opposition.

      But I don't see why a messy claim should benefit the patentee. If a particular feature is so unclear that it cannot reasonably be given a meaning, it will probably not help much for novelty and inventive step, and at the same time it might make it impossible to infringe the patent.

      So, I think, all of this matters most in case of clarity problems that merely make the claim difficult to construct. I agree that such clarity issues do not improve legal certainty, but so be it. Clarity of a claim is anyway a matter of degree.

      Btw, I'm writing this with the benefit of having read G 3/14. I'm not sure anymore what my view was a mere week ago! :-)