As noted in a recent post on IPcopy, 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).
Since our earlier post we have heard mention of this referral from a member of the Technical Boards of Appeal at a seminar in London and have also had further comments from the Chairman of the case in question, including some suggestions as to when the referral will progress further.
On 11 February 2014 at CIPA Hall an excellent presentation on Opposition and Appeal was given by Marcus O. Müller, a Member of Board of Appeal Technical Board of Appeal – Chemistry | Dir. 188.8.131.52 | EPO, and Cees A.M. Mulder, speaking on behalf of epi.
As part of the presentation the issue of clarity in the context of the incorporation of a granted dependent claim into the granted claim in opposition proceedings was discussed.
It was noted that case law is conflicting on this issue with cases such as T 1855/07 (point 2) suggesting that an unclear granted dependent claim is not attackable when incorporated into a granted independent claim:
The power to examine clarity under Article 84 EPC fails when the amendment merely consists in the literal inclusion of dependent claims into the associated independent claim of a patent as granted
On the other hand cases such as T 459/09 suggest that such a claim combination is attackable under Article 84 EPC in opposition appeal proceedings:
An amendment consisting of the incorporation of a technically meaningful feature in an independent claim of a granted patent represents an attempt to overcome an objection within the framework of Article 100 EPC. Any such amendment is thus of a substantial nature and therefore in principle justifies an unrestricted exercise of the examination power derivable from Article 101(3) EPC, irrespective of the kind of amendment performed. Specifically, it is immaterial whether the amendment arises from the combination of a feature from the description with an independent claim, or from the literal combination of claims of the granted patent.
According to comments made during the open discussions at the seminar it sounds like this referral has been one that many people at the EPO have wanted for some time. There was speculation that the question that is eventually referred to the enlarged Board of Appeal may be broader than that asked in the original oral proceedings.
In particular it was suggested that as well as the question as stated it could be possible for the question to be extended to ask whether the clarity of any of the granted claims can be put in question in the event that an amendment is made by combining granted claims (e.g. if the proposed amendment is Claim 1 plus Claim 5 can the clarity of granted Claim 10 be questioned?). It was also suggested that the referral question might ask whether Article 83 EPC can additionally be considered when such amendments are made (e.g. if the proposed amendment of Claim 1 plus Claim 5 includes a term that is potentially not sufficient and Article 100(b) EPC has not been raised in the Opposition, can Article 83 EPC be invoked when the Claim 1 plus Claim 5 amendment is submitted?).
Finally during the seminar it was suggested that the number of stays being requested while the question is being considered by the EBoA may increase and making such an amendment or raising an objection to such an amendment may become a tactic for delaying cases.
The application number in the case that has generated the referral to the EBoA is 05851833.3. As noted in the comments section to the earlier IPcopy post, Keltie LLP was appointed as representative to the patent proprietor after the opposition was filed.
ipcopydev was at the original oral proceedings and spoke with the TBA chairman after the proceedings who said that all the technical boards were very eager to see this referral progress. However, the technical boards realise that it is likely to cause havoc within the Opposition Division and so they were pressuring the EBoA to prioritise the case. The question(s) will apparently be finalised and issue in the next month at most.
ipcopydev has also speculated based on the above conversation that several of the TBA chairmen may have all gotten together and so the question to be a little broader than that posed during the oral proceedings.
Interestingly, in an Opposition hearing recently attended by Keltie, Article 84 EPC was raised against a First Auxiliary Request, which was a straight combination of the main independent claim and a dependent claim as granted. In that instance the Opposition Division said that Article 84 EPC could not be raised because there was no change to the subject-matter as granted – it is the same as the dependent claim as granted.
Has anyone else seen this issue raised since the hearing on05851833.3? And if so, what was the outcome?
Mark Richardson 19 February 2014