T 1477/15 - Clear vs concise

Key points

• This is the third appeal in this opposition, after T0468/09 and T0801/13. The decision contains numerous interesting aspects.
• The Board gives a useful general remark about Article 84 : " Clarity and conciseness requirements can conflict to some extent, because where clarity would demand additional explanations, conciseness requires that the claims be as short as possible. The Board considers that it is not desirable to unnecessarily overload a claim in pursuit of an unattainable absolute clarity of wording." 
• The Board found the claims of Aux Req 3 to be allowable. The opponents objected to the adaption of the description, in particular that further the description should be further adapted to the claims. The Board does not agree, the description (of the patent as granted) needs to be adapted only to the amendments of the claims made during opposition. " The grant of a patent marks a cut-off point (T 1149/97, OJ EPO 2000, 259) defining the rights of third parties and the protection enjoyed by the patent proprietor. []The case law has therefore justifiably limited the amendments possible during opposition or opposition appeal proceedings to those rendered necessary as a result of such proceedings, in particular due to amendments made to the claims. This implies in particular that possible "mistakes", inconsistencies or amendments "forgotten" during the grant proceedings and present in the granted patent are not to be corrected unless they result from opposition and/or opposition appeal proceedings." 
• During the oral proceedings, the proprietor had withdrawn Aux Reqs 1 and 2. The opponents objected, and requested a written decision regarding these requests. The Board does  not agree. " The Board fails to see any basis in the EPC for not allowing the patent proprietor to withdraw its auxiliary requests 1 and 2." " In other words, if a patent proprietor withdraws or no longer agrees to a text (two auxiliary requests, in this case), this principle prevents the Board of appeal from deciding on these issues." 

EPO T 1477/15 - link

11. New auxiliary request 3 - clarity

[] The Board notes that Article 84 EPC requires that the claims be clear and concise and supported by the description. Clarity and conciseness requirements can conflict to some extent, because where clarity would demand additional explanations, conciseness requires that the claims be as short as possible. The Board considers that it is not desirable to unnecessarily overload a claim in pursuit of an unattainable absolute clarity of wording. It is therefore in line with established jurisprudence, according to which the reference reader for clarity purposes should be the skilled person who has read the patent as a whole with a mind willing to understand rather than desirous to misunderstand (T 0190/99 (point 2.2.5.); T 0012/11 (point 4 of the reasons); T 1192/02 (point 2 of the reasons)).

13. New auxiliary request 3 - adaptation of the description

The opponents considered that the description should be adapted, and even corrected, because several elements were not in line with the claimed embodiments. This was the case, for instance, for the reference to a first series of embodiments in paragraph [0011], for the reference to a Figure 13 which no longer existed, and for Figure 12 which showed an embodiment according to the former second series of embodiments.

Certain principles have to be applied when adapting the description in opposition and opposition appeal proceedings. The grant of a patent marks a cut-off point (T 1149/97, OJ EPO 2000, 259) defining the rights of third parties and the protection enjoyed by the patent proprietor. The extent of protection is determined in particular by applying Article 69 EPC, which stipulates that the description and drawings are to be used to interpret the claims, and the Protocol on the Interpretation of Article 69 EPC. In other words, any amendment of the description and drawings has or may potentially have an effect on how the claims must be interpreted. Rule 80 EPC follows the same line, by only allowing amendments occasioned by a ground for opposition under Article 100 EPC. The case law has therefore justifiably limited the amendments possible during opposition or opposition appeal proceedings to those rendered necessary as a result of such proceedings, in particular due to amendments made to the claims. This implies in particular that possible "mistakes", inconsistencies or amendments "forgotten" during the grant proceedings and present in the granted patent are not to be corrected unless they result from opposition and/or opposition appeal proceedings.

For the above reasons, the amendments concerning deletion of Figure 12, the reference to a non-existing Figure 13, or suggested corrections to the wording used in the description are not necessary in the sense just explained above and the Board accepts the adapted description (paragraphs [0001] to [0039]) filed on 23 February 2017.

14. Right to a decision on auxiliary requests 1 and 2

At the end of the oral proceedings, when the chairman asked for the parties' final requests, the patent proprietor maintained its main request, new auxiliary request 3 and auxiliary request 9, but withdrew auxiliary requests 1 and 2 filed with its statement setting out the grounds of appeal. Since auxiliary request 2 was the request on which the decision under appeal was based, the opponents took the view that they had a right to a substantiated decision on their successful appeal against the impugned decision, so the patent proprietor did not have the right to withdraw this request.

The Board fails to see any basis in the EPC for not allowing the patent proprietor to withdraw its auxiliary requests 1 and 2. On the contrary, Article 113(2) EPC explicitly states that "The European Patent Office shall examine, and decide upon, the European patent application or the European patent only in the text submitted to it, or agreed, by the applicant or the proprietor of the patent". It is noteworthy that this provision is specifically worded to require the European Patent Office to decide only on a text submitted (or agreed) by the proprietor of the patent. It therefore obviously applies in opposition proceedings before the opposition divisions. Under Rule 100(1) EPC it also applies before the boards of appeal in opposition appeal proceedings: "Unless otherwise provided, the provisions relating to proceedings before the department which has taken the decision impugned shall apply to appeal proceedings". Moreover, it is generally accepted that in appeal proceedings the principle of party disposition applies (see e.g. R 0013/13, point 15), meaning that parties can put forward, withhold or withdraw their requests as they see fit. In other words, if a patent proprietor withdraws or no longer agrees to a text (two auxiliary requests, in this case), this principle prevents the Board of appeal from deciding on these issues.

Therefore the Board has no power to object to the patent proprietor's withdrawal of auxiliary requests 1 and 2.