G 3/14: The Enlarged Board of Appeal will decide on the question whether claims resulting from the combination of dependent claims with independent claims during opposition proceedings can be examined for the requirement of clarity (06/2014)

Clarity is not a ground for opposition under the EPC. Based on this legal fact it has been a long standing tradition that amended independent claims which comprise features taken from granted dependent claims were not open to examination for compliance with Art. 84 EPC (clarity). Only claims that contained features taken from the description were examined for the requirements of Art. 84 EPC.

Only rarely the Boards of Appeal took the position that any amendment even it was based on features derived from granted dependent claims were open to examination for compliance with Art. 84 EPC (cf. T 1495/05, T 656/07, and most recent T 459/09).

Moreover, in decision G 9/91 (point 19) the Enlarged Board of Appeal had already stated in an orbiter dictum that

“[…] in case of amendments of the claims or other parts of a patent [in the course of opposition or appeal proceedings,] such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of Article 123(2) and (3) EPC).”

However, the majority of Boards of appeal and, in particular, the first instances of the opposition proceedings usually did not interpret this statement in the decision G 9/91 as an instruction to examine the compliance of amended independent claims which comprise features taken from dependent claims with Art. 84 EPC.

Apparently, the divergent approaches of the various Boards of Appeal on this issue present conflicting case law and due to the fundamental importance of this question the Technical Board of Appeal 3.2.08 with interlocutory decision of 2 April 2014 decided to refer the following questions to the Enlarged Board of Appeal:

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?

The decision of the Enlarged Board of Appeal will be binding for both first and second instances at the EPO and finally create legal certainty for both patentees and opponents regarding the role of Art. 84 EPC in opposition proceedings.

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