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. 

Tuesday, July 26, 2016 T 2306/12 - Unclear how to measure particle size

Pretty particles, but not related to the patent

During opposition proceedings, the proprietor had included in his main claim that "the size of the active ingredient particles is less than 10% of the particle size of the inclusion bodies". The feature was taken from one of the dependent claim in the granted patent.

The patent description does not say how the particle size is to be measured. As the particles are not round, there is no obvious way to measure particle size. The opponent objects that because of this the description does not disclose the invention sufficiently. 

The board is not convinced. We had a similar situation in T 2182/11.

Friday, December 25, 2015 T 1112/12: is the amendment one of the types of amendments of G3/14?

In G3/14 the Enlarged Board of Appeal explained that during opposition no clarity objection can be raised for a number of specific types of amendments - in particular, if the amendments only relate to combining granted claims (or combining a granted claim with a portion of granted claim) or deleting alternatives from the granted claims, no clarity objections can be raised for clarity problems that were already in the granted claims because clarity is not a ground of opposition. In this case there was an amendment made by the patent proprietor and according to the opponent the amended claim lacked clarity. The clarity issue raised by the opponent was similar to a clarity issue raised by the Opposition Division. The Board concluded that this clarity problem was already in the granted claims. According to the Board of Appeal the amendment could be interpreted as deleting an alternative from the granted claim and, as such, the clarity objection is not allowed into this appeal procedure.
The interesting thing in this case is that the two alternatives are not defined as alternatives in the claims. According to the Board, the wording of a specific feature of the granted claims is such that only two alternatives fall within the scope of protection of that specific feature. One of the alternatives is excluded from the scope of protection in the amended claims. Subsequently this Board concludes that this is "deleting an alternative from the granted claims as meant by the Enlarged Board of Appeal in G3/14". Now I wonder whether I may conclude that: "By adding a disclaimer to a claim that excludes one of the alternatives that falls within the scope of protection of the granted claims, one prevents that the Opponent may raise clarity objections to your amended claim."?
Of course the reality of this case is a little bit more complex: during the opposition proceedings a not-supported-by-the-original-disclosure-objection was also raised against the now excluded / disclaimed alternative. 

Friday, March 27, 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.