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The Enlarged Board of Appeal has now issued its Decision on referral G 3/14. G 3/14, originally reported in IPcopy here and with subsequent updates, most recently here, relates to how issues relating to clarity should be considered in opposition and opposition appeal proceedings. The Enlarged Board was faced with a choice between a “conventional” approach in which clarity can only be considered where the lack of clarity lies in the amendment (a line of cases which the EBA considered to lead from T 301/87) and a “divergent” approach allowing a wider power to examine for clarity (a line of cases considered to lead from T 1459/05 – the EBA drew particular attention here to T 472/88). The Enlarged Board came down clearly on the side of the conventional approach, but also went beyond the circumstances of the case referred to discuss the boundary between claims that should and should not be examined for clarity.
The main question to be decided by the EBA was as follows:
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?
The other questions are all contingent on the answer to the first question, and can be found here.
The EBA considered that there were two basic types of amendment that needed to be considered – one of these basic type was then subdivided further. These types are as follows:
Type A (from option (a) in Question 1) – “Elements of dependent claims as granted”, considered by the EBA to comprise (i) cases where the dependent claim comprises alternative embodiments and the amendment covers one of them (Type A(i) amendment) and (ii) cases where a feature is introduced into an independent claim from a dependent claim, the feature being previously connected to other features of that dependent claim from which it is now disconnected (Type A(ii) amendment).
Type B (from option (b) in Question 1) – This consists of literal insertion of complete dependent claims into the existing independent claim.
The EBA considered that it only needed to address Type B amendments to address the case at issue – however, the EBA took the view that to remove legal uncertainty, it should address Type A amendments as well.
The EBA had a lot of material to consider – it received several amicus briefs on either side and even a submission from the President of the EPO (arguing in support of a “divergent” approach). The EBA made an exhaustive examination of the EPC and case law to come to its view. A key finding is the explicit disapproval of the approach taken in T 472/88 to interpreting what “arising out” of an amendment should mean – in T 472/88 the Board found that an existing issue had been “highlighted” and “made visible” by amendment, and this was used in subsequent cases to open up the issue of clarity. The EBA stated that development of the jurisprudence of the Boards of Appeal in this way “was not legitimate” and could not therefore be used to underpin a general license to take a “divergent” approach. The EBA went on to assess Article 101(30) and Article 84 EP and found no good basis for taking a “divergent” approach.
The EBA assessed the two (well, three) types of amendment in the following way – Type B amendments were considered first.
Type B – The EBA considered that type B amendments should be treated according to the “conventional” approach for a number of reasons. The EBA specifically considered the “brought into light” argument used after T 472/88 and explicitly rejected it as a reason to take a different approach, even in exceptional cases.
Type A(i) – The EBA considered that there was no material difference between Type B amendments and Type A(i) amendments, and that these should also follow the “conventional” approach. The EBA went further, and found that the following should be treated the same way: amendments comprising deletion of claim wording that narrowed claim scope but “leaving intact a pre-existing lack of compliance with Article 84 EPC (e.g. T 301/87); and deletion of optional features from a granted claim.
Type A(ii) – The EBA considers that it is legitimate to examine such claims for clarity under Article 84 EPC if an alleged lack of compliance with Article 84 EPC has been introduced by the amendment (and that this has never been in doubt). However, if the alleged lack of compliance has not been introduced by the amendment, then there should not be examination for clarity (again following T 301/87).
The EBA encapsulates its answer to the questions in one paragraph:
In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that, the amendment introduces non-compliance with Article 84 EPC.
This decision is interesting, as it seem to come down very clearly for one approach over another with no hint of compromise, and provides guidance for patentees and opponents that is rather more extensive than might have been expected. Expect plenty more comment to come…
Richard Lawrence 26 March 2015
IPcopy 
I trust that I am not the only one to be deeply disappointed by the positioned expressed by the EBA. It is somewhat absurd to consider that amended claims cannot be examined for compliance with the requirements of Article 84 EPC on the mere ground that the amendment does NOT introduce non-compliance with Article 84 EPC. If a particular dependent claim as granted is objectively unclear within the meaning of Article 84 EPC (which is not uncommon as such in practice as the clarity of dependent claims is often overlooked during examination proceedings) and the amendment submitted during opposition proceedings consists in the literal insertion of the – unclear – features of that particular dependent claim in a parent independent claim, how is it objectively possible to examine the conformity of that particular amendment with the provisions of the EPC ? Shall we all start drafting dependent claims that are intentionally unclear with the hope to get them granted and – if so – create fall-back positions that won’t be examined under Article 84 EPC ?
That the EBA elected to settle the matter as definitively as they did should be commended. I doubt the CJEU if faced with such questions would have sought to clear up the issue once and for all. Many of those arguing for a change of practice seem to wish to ignore that the legislator has repeatedly chosen not to permit the inclusion of Article 84 EPC as a ground of opposition. For the EBA to allow this ground through the back-door would have required a considerable stretch of the imagination, perhaps what the CJEU describes as a teleological approach. The ramifications of such a change would have been profound in both EPO and national post-grant proceedings. Not least that the time allocated for opposition and appeal would almost certainly have to have been increased where auxiliary requests were submitted in order to accommodate the obligatory Article 84 EPC discussion. Two (or more) day long oppositions might be good for attorneys but are not generally desirable for most parties and would only extend the already lengthy backlogs at the EPO.
If there is a genuine concern about the clarity of claims granted then surely this is better addressed by obliging the ED to do their job properly pre-grant and to issue a statement in the Communication under Rule 71(3) EPC indicating that all claims are deemed to meet the requirements of Article 84 EPC. If this isn’t enough then third party observations pre-grant are always available. Finally, given the strength of feeling this issue has evoked maybe EPI, CIPA and AIPLA ought to be lobbying for the next revision of the EPC (whenever that may be) to include Article 84 as a grounds of opposition – rather than just the UK.