Home » Patents » Clarity referral to the Enlarged Board – the EPO issues a clarifying notice (G3/14)

Clarity referral to the Enlarged Board – the EPO issues a clarifying notice (G3/14)

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epologoReferral G3/14, which relates to the issue of clarity objections in Opposition and Appeal Board proceedings, is currently pending before the EPO. As noted in an earlier IPcopy post the issues concerned are fairly fundamental and have the potential to impact many post grant proceedings via the possibility of the staying of proceedings.

The EPO has recently issued a Notice concerning the staying of proceedings due to the referral of G3/14. As explained in the EPO Notice:

The questions referred to the Enlarged Board of Appeal [in G3/14] seek, in particular, to clarify whether the term “amendments” as used in decision G 9/91 of the Enlarged Board of Appeal is to be understood as encompassing a literal insertion of elements of dependent claims as granted and/or of complete dependent claims as granted into an independent claim, so that opposition divisions are required byArticle 101(3) EPC to examine the clarity of independent claims thus amended during the proceedings. All four questions referred to the Enlarged Board of Appeal can be found in decision T 373/12.

The period for filing Amicus Curiae Briefs on G3/14 closed at the end of August. Hopefully, there will be some movement on the referral itself in the near future. In the meantime, the EPO notes:

3. The President of the European Patent Office has decided that, having regard to the potential impact of the referral, all proceedings before the EPO opposition divisions where the decision depends entirely on the outcome of the Enlarged Board of Appeal’s decision will be stayed ex officio until the Enlarged Board of Appeal issues its decision.

4. This concerns cases in which amendments are made during opposition proceedings and in which these amendments consist of a literal insertion of elements of dependent claims as granted and/or of complete dependent claims as granted into an independent claim, provided the amendments raise a clarity issue and the opposition division’s decision depends entirely on the outcome of the Enlarged Board of Appeal’s decision.

5. If proceedings are stayed, the responsible opposition division will inform the parties thereof. At the same time, communications setting time limits for the parties to react will be withdrawn by the opposition division, and no further communications to this effect will be despatched. Once the Enlarged Board of Appeal has given its decision, a further communication will be issued concerning the resumption of proceedings.

6. The present notice is immediately applicable but limited to those cases affected by referral G 3/14. It supersedes, for this specific referral, the general practice of the departments of the first instance as laid down in the Guidelines for Examination, Part E-VI, 3, according to which proceedings in case of referrals pending before the Enlarged Board of Appeal are stayed only at the explicit request of a party to the proceedings.

Mark Richardson 17 October 2014


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