EPO publishes new G3/14 decision

Background

G3/14 relates to the appeal of an opposition. During the appeal, the proprietor attempted to combine an independent claim with a dependent claim.

The opponent objected on the basis that the dependent claim included the word 'substantially' and as a result of this combination, the claims would lack clarity (Article 84 EPC)

Although clarity is not a ground for opposition of a granted patent, Article 101(3) EPC states that:

If the Opposition Division is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during the opposition proceedings, the patent and the invention to which it relates

(a) meet the requirements of this Convention, it shall decide to maintain the patent as amended, provided that the conditions laid down in the Implementing Regulations are fulfilled;

(b) do not meet the requirements of this Convention, it shall revoke the patent.

The patent must therefore be revoked if an amendment makes the claim unclear.

In this case, the proprietor argued that the combination of an existing claim with an independent claim is not an 'amendment' and therefore Article 101(3)(b) does not apply. However, the Board of Appeal noted that other previous boards had ruled differently on this issue and so the issue was referred to the Enlarged Board of Appeal.

Questions to the Enlarged Board of Appeal

The following questions were submitted to the Enlarged Board of Appeal:

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?

2) If the Enlarged Board answers Question 1 in the affirmative, is then an examination of the clarity of the independent claim in 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?

Response from the Enlarged Board of Appeal

The Enlarged Board of Appeal responded to the questions as follows:

(85) Therefore the Enlarged Board's answer to part (a) of the referred question 1 is: 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.

(81) Therefore the Enlarged Board's answer to part (b) of the referred question is, no. 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.

(86) The above answers also deal with referred questions 2, 3, and 4.

Analysis and conclusions

Although the Enlarged Board of Appeal's conclusions do not appear to directly address the underlying issue, it seems clear that the Enlarged Board of Appeal do not consider that the Opposition Division (or indeed, the Board of Appeal) is obliged to re-open examination of the entire patent application when an amendment is made during opposition. This reaffirms the ruling of T301/87, in which the Board of Appeal indicated that it would be "somewhat absurd if the making of a minor amendment could enable objections outside Article 100 EPC to be raised which have no connection with the amendment itself".

The Enlarged Board of Appeal's conclusion does not, however, appear to be entirely clear on whether the combining of claims is considered to be an amendment or whether such a change requires (or permits) an analysis under Article 84 EPC.

The Enlarged Board of Appeal's comments on these issues can, however, be found within the ruling itself. In particular:

(79) Several submissions argue that [an amendment in which an independent claim is combined with the whole of a dependent claim] is not an amendment within the meaning of Article 101(3) EPC. The Enlarged Board does not agree. It appears to be unrealistic to say that a patent has not been amended when the whole purpose of the new wording is to save the patent from revocation.

So the Enlarged Board of Appeal considers such a change to be an amendment. However, as explained above, it is necessary to consider the clarity of a claim resulting from an amendment "only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC". Does, then, this amendment introduce non-compliance with Article 84 EPC?

The Enlarged Board of Appeal appear to think not. In particular, the Enlarged Board of Appeal noted that:

(77) [...] considering the case of an amendment consisting of the striking out of one or more independent claims (with any dependent claims), leaving other independent claims and their dependent claims intact, or of the striking out of one or more dependent claims, leaving the independent claims and other dependent claims intact [...].; In these cases, the Enlarged Board considers it would be unreasonable (using the language of G1/91) if these other claims could now be examined for compliance with the requirements of Article 84 EPC.

In other words, an amendment that affects a subset of claims should not allow an opponent the freedom to cause every claim (both those affected and those unaffected) to be completely re-opened to full examination once more.

The Enlarged Board of Appeal further noted that:

(80) [...] But in any case, while the patent must be considered to have been amended, the claim which is in place after the amendment is in reality and substance not a new claim. It was already in the granted patent. [...] Again, it appears to the Enlarged Board that it would be arbitrary and unjustified to reach a different conclusion for [an amendment in which an independent claim is combined with the whole of a dependent claim] considering that, but for Rule 43(4) EPC, the dependent claim could have been formulated as a separate independent claim.

Rule 43(4) EPC requires that (where possible) claims that include all the features of an earlier claim should refer back to that earlier claim.

The Enlarged Board of Appeal's argument could therefore be interpreted as follows: Clarity is only to be examined to the extent that an amendment introduces a clarity issue. Although the 'combining' of two claims is an amendment, this does not result in the introduction of any clarity issues because the claim (and its clarity issues) were there all along. This is true even when an independent claims and a dependent claim are combined because dependent claims are written as such, purely for the purposes of conciseness.

It would therefore appear that, in the referring case, if the proprietor were to combine an independent claim with a previously presented (unclear) dependent claim, the Opposition Division (and/or the Board of Appeal) are not permitted to revoke the patent on the grounds of clarity.

Advice

This ruling would appear to limit the different avenues of attack for an opposition procedure. In particular, it would appear that only the grounds of opposition specified under Article 100 EPC are available for attacking any presented combination of claims in a granted patent.

Accordingly, parties who are aware of potentially problematic patents may be advised to consider their options for dealing with the patent prior to that patent granting. In particular, third party observations may be used to raise any issue of patentability during the examination stage. Once the patent application is granted, it may be significantly harder to attack the patent – especially if the proprietor is able to amend to dependent claims for which no direct ground of opposition listed in Article 101 exists.

It may also be expected that examiners at the European Patent Office may now increase the thoroughness with which the dependent claims are examined.