T 0646/13 - Clarity or insufficiency

Key points

• The opponent had requested a referral to the Enlarged Board about the question "If one or several features of a claim are so ill-defined that a skilled person does not know when he is working within the forbidden area of the claims, is this an issue to be addressed under clarity - Article 84, or under sufficiency of disclosure - Article 83" 
• The Board does not refer the question. "[More] importantly, decision T 464/05 forms part of a line of jurisprudence established between 2004 and 2007, which has not been generally followed since then [as explained in decision T 1811/13]. As today there is a clearly predominant opinion among the boards that the definition of the "forbidden area" of a claim should not be considered as a matter related to Articles 83 and 100(b) EPC (1973), the alleged contradiction between decisions T 464/05 and T 1811/13 does not exist. Rather than being in conflict, these decisions illustrate a development of the case law on a particular question over an extended period of time. " 

EPO T 0646/13 -  link

4. Request for referral of questions to the Enlarged Board of Appeal

4.1 The respondent requests that two questions relating to allegedly diverging jurisprudence by the boards of appeal on the issues of clarity of the claims and sufficiency of disclosure be referred to the Enlarged Board of Appeal (cf. point IX. above).

"In view of the contradicting positions taken in decision [sic] T 1811/13 and T 464/05 (and the decisions referred to) the following questions are referred to the EBoA

1. If one or several features of a claim are so ill-defined that a skilled person does not know when he is working within the forbidden area of the claims, is this an issue to be addressed under clarity - Article 84, or under sufficiency of disclosure - Article 83, i.e. whether the claimed invention was not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art?

2. If the answer 1 [sic] cannot be decided as such, what are the criteria for deciding whether such an issue is to be addressed under Article 84 or Article 83?"

4.2 Article 112(1)(a) EPC 1973 requires the board of appeal during proceedings on a case, and in order to ensure uniform application of the law or if an important point of law arises, to refer any question to the Enlarged Board of Appeal, either of its own motion or following a request from a party to the appeal, if it considers that a decision is required for the above purposes.

4.3 In the present case, the request for a referral hinges on an alleged contradiction between decisions T 464/05 and T 1811/13.

4.3.1 In the case underlying decision T 464/05 dated 14 May 2007, an independent claim comprised the parameter of a "weighted average mass vapour transmission rate of at least 3500g/m**(2)/24 hr", for which no details of the test method to be applied were indicated in the patent specification, such that the boundaries of the claimed subject-matter were not well-defined. The board held that this aspect pertained to Article 84 EPC 1973 (cf. Reasons 3.3.1). Moreover, on the basis of the information available from the patent in suit and the common general knowledge, the test method would provide significantly different results, which was confirmed by the experimental data on file. The skilled person would not be able to determine whether at least some of the tested samples were according to the invention or not (i.e. fall within the forbidden area of the claim), such that the claim could not be reproduced over the whole range claimed (cf. Reasons 3.4.3).

4.3.2 In decision T 1811/13 of 8 November 2016 (cf. Reasons 5.1), the present board in a different composition reviewed the boards' jurisprudence (including decision T 464/05) on the question of whether or not the impossibility for the skilled person to know whether he was working within the forbidden area entailed the impossibility of carrying out the invention. It concluded that "today there is agreement or at least a clearly predominant opinion among the boards that the definition of the "forbidden area" of a claim should not be considered as a matter related to Article 83 EPC." The board added that: "This is not to say that a lack of clarity cannot result in an insufficient disclosure of the invention. However, in such a case it is not sufficient to establish that a claim lacks clarity, but it is necessary to establish that the application or patent, as the case may be, 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. In other words, it is not sufficient to establish a lack of clarity of the claims for establishing lack of compliance with Article 83 EPC 1973; it is necessary to show that the lack of clarity affects the patent as a whole (i.e. not only the claims) and that it is such that the skilled person - who can avail himself of the description and his common general knowledge - is hindered from carrying out the invention".

4.3.3 In view of the above, the board observes that decisions T 464/05 and T 1811/13 concur in that an unclear definition of the boundaries of the claim pertains to Article 84 EPC 1973. It is further noted that, in contrast with the proceedings underlying decision T 464/05, in the present case no (experimental) evidence was filed for the allegation that, on the basis of the information available from the patent-in-suit and the common general knowledge, the vagueness of some of the claimed terms and the supposedly missing information on how to determine the proportion of globular and flat particles and the claimed viscosity would lead to significantly different products, for which it was impossible to establish whether they were according to the invention or not. In these circumstances, application of the principles set out in decisions T 464/05 and T 1811/13 would not lead to different results. Consequently, the requested referral is not required by the board in order to come to a decision in the present case.

4.3.4 Finally and more importantly, as explained in decision T 1811/13, decision T 464/05 forms part of a line of jurisprudence established between 2004 and 2007, which has not been generally followed since then. As today there is a clearly predominant opinion among the boards that the definition of the "forbidden area" of a claim should not be considered as a matter related to Articles 83 and 100(b) EPC (1973), the alleged contradiction between decisions T 464/05 and T 1811/13 does not exist. Rather than being in conflict, these decisions illustrate a development of the case law on a particular question over an extended period of time. In that respect, the Enlarged Board of Appeal has held that for a referral to be admissible it has to be considered whether apparently divergent decisions might not be part of a constant development, possibly still ongoing, in jurisprudence on patent law issues, in the course of which older decisions have lost their significance and so can no longer be considered in connection with newer decisions. The Enlarged Board concludes that such putative differences do not justify a referral, legal development being one of the principal duties of the boards (cf. decision G 3/08, OJ EPO 2011, 10, Reasons 7.3.8).

4.3.5 For these reasons, the request for a referral to the Enlarged Board of Appeal pursuant to Article 112(1)(a) EPC 1973 is to be rejected.