G 3/14: Decision of the EPO’s Enlarged Board of Appeal on clarity in opposition

30 March 2015

The importance of clarity is difficult to exaggerate, as it constitutes a pillar of the European Patent Convention (EPC). The clarity concept is found in four important EPC articles, stating that a European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Art. 83), that the claims shall be clear and concise (Art. 84), that one of the ground of opposition is that the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Art. 100 (b)), and analogously, that a European patent may be revoked if the latter prevails (A. 138 (1) (b)).

However, according to the current wording of the EPC, the requirement of clear claims in the sense of Art. 84 is not a valid ground for opposition. Instead, claims unclear from the outset can be maintained (Board of Appeal decision T23/86), and objections against lack of clarity cannot be raised if the objections "do not arise out of" the amendments made (T301/87). This jurisprudence is clearly (no pun intended) not in complete harmony with Art. 101(3), which states that an amended European patent must meet the requirements of the EPC.

In the summary of Facts and Submissions of the decision G 3/14, the first question asked by the Board of Appeal under Art. 112 was related to the interpretation of the term "amendment" as used in decision G9/91: should it be "...understood as encompassing a literal insertion of (a) elements of dependent claims as granted and/or 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 Enlarged Board of Appeal answered this question (and thereby considering the following questions already dealt with) by stating that the clarity of the amended claims of a patent may be examined in opposition proceedings "...only when and then only to the extent that the amendment introduces non-compliance with Article 84 EPC." This is, in particular, not the case where the amendment consists of the literal insertion of complete dependent claims as granted into an independent claim; or in case of the introduction into an independent claim of alternative embodiments contained in a dependent claim.

Love Koči
European Patent Attorney
Uppsala office

30 March 2015