The freedom for a patentee to amend claims during EPO opposition and opposition appeal proceedings is to be considered by the Enlarged Board of Appeal (EBA). In a referral to be issued shortly, the EBA will be asked if the clarity of a proposed amended claim should always be open for consideration even if the amendment simply consists of limiting the scope of a granted independent claim by incorporating the features of a granted subsidiary claim.
Historically such amendments have not been reviewed for compliance with clarity requirements of Article 84 EPC largely because the combination of independent and dependent features when read together is inherently present in the patent as granted.
Clarity in itself is not a ground of opposition in Europe, but it can be brought into proceedings when amendments that change the wording of the claims are submitted by the patent proprietor. Typically, the types of amendments that have been challenged for lack of clarity involve incorporating features from the description or redefining the claims by omitting or adding features not previously recited explicitly in the claims. However, a few isolated recent decisions of Technical Boards of Appeal have raised the possibility that any amendment should render the claim open to challenge for lack of clarity, even if the claims as granted already explicitly recited the combination of features, albeit in different claims.
The matter came to a head in the recent case T0373/12 where the opponent elected to request a stay of proceedings to seek clarity on the issue from the EBA, submitting the following question:
“Does an amendment of an independent claim during opposition proceedings hinder the examination with regard to clarity (Art. 84 EPC), if a combination of an independent claim as granted with the elements of a dependent claim as granted? (Contrary to the decisions T 459/09 and T 409/10).”
This question will be considered by the Technical Board of Appeal and may be revised further before it is eventually submitted to the EBA.
At present it is unclear as to whether the Opposition and Technical Boards will seek to stay proceedings in all pending cases where the proprietor of the patent is proposing an amendment in order to await the outcome of the EBA decision. Given the fundamental nature of the question, if proceedings are stayed in all such instances then it can be expected that the backlog of cases currently under opposition is likely to skyrocket.
Keltie LLP attorneys represented the patent proprietor in this matter.