EPO, Technical Board of Appeal 3.2.08, interlocutory decision of 2 April 2014 in case T 373/12 – Examination of clarity of amended claims by opposition divisions and boards of appeals
For many years the boards of Appeals of the EPO have been struggling with the question to which extent the requirement of clarity has to be examined if claims are amended in opposition proceedings. On the one hand, lack of clarity is not a ground for opposition, on the other hand, amended claims have to meet the requirements of the EPC. So far, the predominant position has been that lack of clarity is not to be examined if amended claims are a mere combination of granted claims.
Already decision T 1495/05 did not share this position concluding that the examination of clarity in such cases was a matter of discretion of the boards. Subsequently, different approaches were developed by different boards. Recently, decision T 459/09 held that clarity of an amended claim should, in principle, be examined even if the amendment only consists in a mere literal combination of claims of the patent as granted. None of the different approaches has become a commonly accepted position. Thus, it has become a matter of coincidence how the problem is treated in an individual case. This situation of legal uncertainty is to be resolved by the Enlarged Board of Appeal. The case will be registered as G 3/14.
It may be added that the same problem arises under the Agreement on a Unified Patent Court. Whereas Rule 30(1) b) of the Draft Rules of Procedure of the UPC (see post dated 12/03/2014) requires the proprietor to explain why an amendment satisfies the requirement of Article 84 EPC, it does not define to which extent the requirement is applicable.