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.