G 3/14 - Examination of clarity in opposition

EPO Headnote
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.

Analysis

• Just one of the numerous aspects that deserve analysis: In [54], the Enlarged Board says: "For example, it has never been doubted that when features are taken from the description and are inserted into a granted claim by way of amendment, the amended claim must be examined for compliance with Article 84 EPC in the light of those new features[]. The basis for this can only be Article 101(3) EPC. The Enlarged Board therefore disagrees with the submissions to the effect that the purposes of Article 84 EPC come to an end with the grant of the patent.
• This confirms that A84 as such only provides a requirement for examination of applications before grant. It is to be recalled that Article 84 EPC  is contained in Part III, Chapter I, titled: "Filing and requirements of the European patent application". 
• Article 101(3) EPC, which provides as follows: "If the Opposition Division [or Board of Appeal] 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.
• As FICPI has submitted (log date in register online: 24.08.2014): "On its wording, Article 84 EPC on the other hand relates to the claims of patent applications. The purpose of this article (and all of Articles 75 to 86 EPC) have found their end with the grant of the patent." This is rejected by the EBA in [54], however seemingly more based on established EPO practice than on the EPC.
• The examination of clarity of amendments made in opposition hence seems to be based more or less (arguably) on a tacit requirement of the patent implied in A101(3) EPC rather than on A84 itself. Although this is definitely not what the Enlarged Board concludes in this decision.
  
  
• Addendum 29.04.2021: The Enlarged Board also held that: “A granted claim may turn out not to comply with Article 84 EPC but such non-compliance must be lived with. However, any lack of clarity of the claims may still be highly relevant in opposition proceedings in that it can influence the decisions on issues under Article 100 EPC: []. For example the lack of clarity of a claim may have a profound effect on the outcome of the grounds for opposition according to (i) Article 100(b) / sufficiency []  (ii) Article 100(a) EPC / novelty [], or Article 100(a) EPC / inventive step []. ”

G 3/14 - published 26.03.2015

G 0003/14

Dated 24.03.2015 - Enlarged Board - distribution A - for the decision, click here
Enlarged Board (Van der Eijk, Garnett, Beckedorf, Meinders, Oswald, Spineanu-Matei, Tardo-Dino)

Selected parts of the decision

V.(b) Amicus curiae briefs

V.(b)(i) FICPI

- The legal framework for answering the questions is wider than that suggested by the referring Board.

- It is not correct to say that the power of examination conferred by Article 101(3) EPC is in principle more extensive than that provided by Article 101(1) and 101(2) EPC. G 1/91 generally discussed whether Article 101(3) EPC means that all requirements of the EPC are to be applied to amendments made in opposition proceedings but expressly left open the "justification of a certain applicability of clarity requirements in the sense of" Article 84, 2nd sentence, EPC. It was made clear that the applicability of the term "other requirements of this Convention" in Article 101(3) EPC cannot depend merely on the wording of the article but also depends on (a) the "ratio legis" of the relevant article (Article 82 EPC in that case) on the one hand and of opposition proceedings on the other, (b) the legal systematics and (c) potentially its historical intention.

- Articles 75 to 76 EPC relate to an application and not to a granted patent; Article 69 EPC distinguishes between the claims of the application and those of the granted patent. The reason is that they are different in nature. Because protection is granted thereby, the claim of a granted patent has the character of a legal norm, since national courts are bound by the wording. They have to interpret the intended meaning of an "unclear" claim in the same way as for an "unclear" legal norm; they cannot invalidate the claim otherwise than within the boundaries of Article 138 EPC (reference was made to the "Straßenbaumaschine" decision of the German Bundesgerichtshof – XZR 95/05).

- The ratio legis of opposition proceedings is to allow third parties to oppose and remove unjustified protective rights conferred by the granted patent (G 1/91). If, for example, a patent has been granted contrary to Article 83 EPC, Article 100(b) provides the corresponding ground for opposition. A reference to Article 83 EPC would not have been suitable as this article relates solely to a patent application. The same applies to Articles 123(2) / 100(c) EPC. Accordingly, Articles 100 and 101(1) and (2) EPC provide all the necessary and intended instruments to fulfil the "ratio legis" of opposition proceedings.

- The requirements of the Convention to be fulfilled as referred to in Article 101(3) EPC are found in Articles 52 to 74 EPC (substantive patent law), Articles 99 to 105c EPC (opposition and limitation) and Articles 113 to 125 EPC (common provisions relating to applicants and granted patents). Thus G 1/91 mentions Articles 123(2) and (3) EPC as examples of the applicability of Article 101(3) EPC. On its wording, Article 84 EPC on the other hand relates to the claims of patent applications. The purpose of this article (and all of Articles 75 to 86 EPC) have found their end with the grant of the patent.

- Thus the ratio legis of opposition proceedings and of Article 84 EPC cannot justify a general power to examine clarity of amended claims.

- G 1/91 left open the question of the justification of the EPO's practice of, to a certain extent, examining clarity in opposition proceedings. A direct application of Article 84, 2nd sentence, EPC is excluded by its wording and its position within the EPC, and by the legal nature of granted claims.

- The expression "patent as amended" in Article 101(3)(a) EPC must refer to the amended form as requested by the proprietor, and thus the essential question relates to the admissibility of the request rather than Article 84 EPC. As regards the admissibility of the request, Rules 80 and 86 EPC are potentially relevant. As regards Rule 86 EPC, Part III of the Implementing Regulations does not relate to clarity in the sense of Article 84 EPC (although it includes implementation of Article 84 EPC in Rule 43 EPC) and accordingly none of these procedural provisions explicitly or implicitly relates to clarity of the claims which are requested to be maintained.

- It is nevertheless a general procedural principle that a procedural request needs to clearly identify the requested subject matter, even if some interpretation may be needed. This procedural principle may provide the necessary justification for the EPO practice of requiring clarity to a certain degree in opposition proceedings. However, this practice should not contravene the basic ratio legis of opposition proceedings and the legal nature of granted claims.

- A granted dependent claim and its granted independent claim each have the character of a legal norm. A dependent claim is essentially the result of the implementation of the conciseness requirement of Article 84 EPC as implemented by Rule 43(4) EPC. Any combination of granted claims merely represents the cancellation of a subset of granted claims and a restriction to the remaining granted claims. As a result, in such a case there is no room for an examination of clarity, whether of the procedural request or by analogous application of Article 84 EPC. If that amended claim could then be examined for clarity, then this would in effect be to accept Article 84 EPC as a ground for opposition. The meaning of the claim has to be determined by interpretation.

- As regards Question 2, examination for clarity in the case of the insertion of a feature from a dependent claim into the independent claim is not prohibited by the legal character of the granted claim. Nevertheless, examination for clarity is not appropriate for all cases:

(a) There should be an entitlement to examine for clarity where the amendment results in a clarity problem which was not present in the granted claims. This is because, when considering the balance between legal certainty for the public and the justified interests of the proprietor, new clarity problems should be avoided.

(b) If, however, the clarity problem was already present in the granted claims, clarity should not be examined. The interests of the proprietor should prevail since the problem was already present and as regards the public legal certainty has not been changed by the amendment.

Reasons for the decision

D. The existing jurisprudence of the Enlarged Board of Appeal

12. In G 1/91 (OJ EPO 1992, 253), the proprietor had amended the claims during proceedings before the Opposition Division, turning an independent claim and four dependent claims into three independent claims (plus one further dependent claim). In appeal proceedings the opponent raised an objection of lack of unity. Whether this was allowable was referred to the Enlarged Board, who said:

"2.1 ... Article 102(3) EPC [1973, the predecessor of Article 101(3) EPC] ... stipulates that, when the patent is maintained as amended, "the patent and the invention to which it relates (must) meet the requirements of this Convention". This could at first be taken to mean that every single requirement of the Convention must be met. Such an interpretation is also borne out by the fact that Article 102(3) EPC [1973] contains exactly the same wording as that chosen for Article 94(1) EPC with regard to the European patent application.

47. In examination proceedings, the EPO is required to examine whether the "application and the invention to which it relates meet the requirements of the EPC" (Article 94 EPC). If so, it shall decide to grant a European patent; if not, it shall refuse the application (Article 97 EPC). Article 84 EPC (which is contained in Part III, Chapter I, titled: "Filing and requirements of the European patent application"), states that:

54. The words used here in Article 101(3) EPC, namely "meet the requirements of this Convention" are the same as those used in Articles 94 and 97 EPC. The Enlarged Board has already concluded that the requirements of Article 84 EPC are part of the requirements of the Convention for the purposes of Articles 94 and 97 EPC. The Enlarged Board sees no reason to doubt that the requirements of Article 84 EPC are also part of the requirements of the Convention for the purposes of Article 101(3) EPC. For example, it has never been doubted that when features are taken from the description and are inserted into a granted claim by way of amendment, the amended claim must be examined for compliance with Article 84 EPC in the light of those new features, whether considered by themselves or in their combination with other parts of the claim as now amended. The basis for this can only be Article 101(3) EPC. The Enlarged Board therefore disagrees with the submissions to the effect that the purposes of Article 84 EPC come to an end with the grant of the patent.

[...]

55. Thus as regards the context of Article 101(3) EPC and the object and purpose of the EPC as implemented by the article, while the requirements of Article 84 EPC play an important role in examination proceedings they play no role in opposition proceedings where the proprietor seeks to have the patent as granted upheld. A granted claim may turn out not to comply with Article 84 EPC but such non-compliance must be lived with. However, any lack of clarity of the claims may still be highly relevant in opposition proceedings in that it can influence the decisions on issues under Article 100 EPC: see T 127/85 (OJ EPO 1989, 271), Headnote and point 2.1 of the Reasons. For example the lack of clarity of a claim may have a profound effect on the outcome of the grounds for opposition according to (i) Article 100(b) / sufficiency (see, e.g., T 684/89, point 2.1.2 of the Reasons; T 5/99, point 2 of the Reasons, T 126/91, point 2.1 of the Reasons; T 59/10, point 4 of the Reasons), (ii) Article 100(a) EPC / novelty (see, e.g., T 57/94, point 2.1 of the Reasons; T 525/90, point 2.1 of the Reasons; T 892/90, point 2 of the Reasons; T 617/92, point 2.2 of the Reasons), or Article 100(a) EPC / inventive step (see, e.g., T 892/90). The reasons why the claim is now considered to be unclear are irrelevant, for example whether it is because a closer consideration is now given to it than may have been given to it in the examination proceedings, or because different minds are now considering the issue, or because the lack of clarity has only become apparent in the light of prior art cited for the first time in opposition proceedings.