tag:blogger.com,1999:blog-8990057754240336385.post993461678221250255..comments2024-02-27T09:18:36.160+01:00Comments on DeltaPatents Case Law blog: G 3/14 (2) - EPC requires all dependent claims to be examined on clarity tooDeltaPatentshttp://www.blogger.com/profile/07830354704918972593noreply@blogger.comBlogger4125tag:blogger.com,1999:blog-8990057754240336385.post-36708252288918437772015-03-31T00:02:31.433+02:002015-03-31T00:02:31.433+02:00Objectively, what does prevent an Opposition Divis...<i>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 ?</i><br /><br />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?).)<br /><br />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.<br /><br />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.<br /><br />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.<br /><br />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! :-)Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-70786772673472342172015-03-30T16:59:58.197+02:002015-03-30T16:59:58.197+02:00It is less than satisfactory however not to be in ...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 ?<br /><br />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 ?<br /><br />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 ?<br /><br />Is it satisfactory for the EPO to possibly maintain patents in amended form with claims that could suffer from potentially serious clarity issues ?<br /><br />Is this satisfactory from the point of view of legal certainty for third parties ?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-39650212936997577882015-03-29T22:28:59.365+02:002015-03-29T22:28:59.365+02:00The main consideration of the EBA seems to be that...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.<br /><br />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.<br /><br />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.<br /><br />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...<br /><br />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.)<br /><br />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.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-90125782300632634322015-03-28T20:12:02.899+01:002015-03-28T20:12:02.899+01:00The provisions of Article 84 EPC are obviously &qu...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.<br />I do regret that the EBA ultimately took the view it took…Ronald Nollhttp://www.kba-notasys.comnoreply@blogger.com