Friday, May 12, 2017 T 1811/13 - Can lack clarity imply lack of sufficiency?

Where exactly are the boundaries of the forbidden  area?

Can a lack of clarity in a claim lead to insufficiency of disclosure? The opponent tries to convert a clarity objection into a lack of sufficiency. The argument is that, the impossibility for the skilled person to know whether he is working within the forbidden area entails the impossibility of carrying out the invention.

To support the point a number of T decisions are cited which side with this argument. The board trumps it though with even more T decisions that do not agree. At the end, the board does concede though that in other situations this argument might work. 

Friday, October 09, 2015 T 1021/11 - Two independent claims for same medical use

In this examination appeal, the main request comprises two independent claims for the same medical indication of the same substance, one claim drafted in the Swiss-type format (use of substance X for the manufacture of a medicament for the treatment of disease Y) and the other claim following the provisions in Article 54(5) EPC (substance X for use in the treatment of disease Y).

In a telephone conversation with the rapporteur, the applicant was invited to comment on the presence of two independent claims for the same medical use in the same set of claims in this request.

The applicant commented that he has a legitimate interest to pursue both claim types in one set because determining the scope of those claims in potential infringement proceedings was a matter for national courts, as confirmed in decision G 02/08. 

In addition, both claim types were deemed allowable by the applicant since the patent application was pending when G 02/08 was issued (and thus the Swiss-type format was allowable) while the transitional provisions concerning the revised Convention Article 54(5) EPC applied to the present application.