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New EBA Referral: The Questions are Published

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epologoAs you will have seen in previous posts, IPCopy has been tracking the progress of the latest referral to the EPO Enlarged Board of Appeal which concerns the scope to which clarity under Article 84 EPC can be raised in post grant proceedings. The Decision of the Technical Board of Appeal 3.2.08 in the case in question (T0373/12, on EP1814480) was published online late last week.

The following questions are referred to the Enlarged Board of Appeal:

1, Is the term “amendments” as used in decision G9/91 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 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 is 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 issues to be considered are fairly fundamental and are likely to affect many post grant proceedings at the EPO. For this reason IPCopy understands that the Technical Boards have requested that the Enlarged Board of Appeal prioritises their handling of the case so as not to cause undue delays due to stays of proceedings in pending cases currently undergoing opposition or appeal.


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