T 0866/24 - Unclear features and their technical effect

Key points

• Claim 1 of auxiliary request 2A differs from claim 1 of the main request in that the following feature has been added at the end (board's labelling and emphasis): 10) "wherein the SPR stops using a maximized proxy provider, at least for a period of time, when at least one of the configured maximum threshold is reached".
• The Board: "The patent description neither mentions the term "maximised proxy provider" nor appears to contain an embodiment having both a "dynamically [configured] utilisation threshold" as well as a "configured maximum threshold". The interaction of these two "thresholds" is thus left to the reader's imagination. ... Since an objection as to lack of clarity cannot be raised in the present case in view of G 3/14, the board has to accept the wording of feature 10) at face value. "
• "If unclear features are added from dependent claims to the independent claims in order to overcome an objection as to lack of inventive step, the onus to show that this objection is credibly overcome typically lies with the proprietor. On balance, in the absence of an objective technical problem which is credibly solved, feature 10) cannot contribute to an inventive step"
• In connection with a further auxiliary request: " According to the perception of this board, there is a recent tendency that dependent claims are less and less examined with respect to clarity in examination proceedings despite the fact that their full examination under Article 84 EPC was not considered "unrealistic" in G 3/14, Reasons 32. Such a full examination is even expressly encouraged by the Enlarged Board of Appeal in G 1/24, Reasons 20 (i.e. highlighting "the importance of the examining division carrying out a high quality examination of whether a claim fulfils the clarity requirements of Article 84 EPC"). The justification for such leniency may be found in the assumption that the protection conferred by a granted patent is defined only by the independent claims. "
• "Where dependent claims are subsequently added to an independent claim in the course of opposition proceedings, opponents are ultimately faced with unclear claim features which, as in the present case, are deemed to have been examined for clarity, although de facto they have not been. Nonetheless, they cannot be objected to under Article 84 EPC due to the conclusions of G 3/14."
• "The Board deems this result unsatisfactory, as an independent claim with unclear features leaves much to the readers' imagination. In addition, unclear features tend to elude a sensible comparison with the respective prior art. On top of that, since opponents may not anticipate with certainty which claim construction will be adopted by the board or a court in infringement proceedings, they may feel obliged to put forward different lines of argumentation for all of the different potential interpretations. "
• "Categorically barring opponents in such cases from raising clarity objections under Article 84 EPC causes undue complexities in the discussion on novelty and inventive step, to the detriment not only of opponents but also of the opposition divisions and the boards of appeal."
• "These unclear formulations of feature 12) do therefore not allow to determine whether the technical effect alleged by the proprietor is indeed achieved."

EPO 

The link to the decision is provided after the jump.

T 0267/18 - The term therapeutic agent is unclear

Key points

• The present decision deals with clarity of the term 'therapeutic agent', but first provides a useful summary of the rules for admissibility of amended claims filed during oral proceedings before the OD.
•  " Auxiliary Request 1 was filed and admitted during the oral proceedings in Opposition (see decision under appeal item 3.3.1). The amendments required no undue evaluation and complied with the requirements of Rule 80 EPC. Since the opposition division departed from its provisional opinion set out in the annex to the summons and finding on the novelty of the main request during the oral proceedings and concluded that the patent could not be maintained as granted, the filing of an auxiliary request, which intended to overcome the novelty objection, seemed justified as the subject of the proceedings had surprisingly changed for the patentee at a late stage of the proceedings." 
• " In principle, a decision taken by a department of first instance in the exercise of its discretion may be overruled by a Board of Appeal only if it is concluded that the department exercised its discretion in accordance with the wrong principles, without taking the right principles into account or in an arbitrarily or unreasonable way, thereby exceeding the proper limits of its discretion (see Case Law of the Boards of Appeal of the EPO, 9th edition, 2019, in the following "Case Law", V.A.3.5.1.b), and in particular decision G 7/93, OJ EPO 1994, 775, reasons 2.6)." 
• "  In exercising its discretion, the division had first to consider the reasons for filing the request at such a late stage in the proceedings, the allowability of the late-filed amendments, on a prima facie basis, and whether the parties and the opposition division could reasonably be expected to familiarise themselves with the proposed amendments in the time available. Since the amendments introduced in claim 1 of the auxiliary request 1 were filed in reaction to a change of the opposition division's opinion regarding novelty, were intended to overcome a novelty objection, did not require any further extensive assessment for both the opposition division and the opponent, and were "prima facie" allowable, they were admitted." 
• italics added. A pertinent question may be whether "the time available" is simply the time scheduled for the oral proceedings before the opposition division or something else.
• " Hence the board fails to see why the opposition division had exercised its discretion according to the wrong principles or in an unreasonable way." 
• " For this reason, it will not overrule the way in which the first instance has exercised its discretion. Furthermore, since the auxiliary request 1 was admitted by the opposition division in the proper exercise of its discretion and was decided upon by the opposition division, the board fails to see a legal basis for disregarding this request (see also Case Law, supra, V.A.3.5.4). It follows that since the aim of appeal proceedings is to review the decision under appeal in a judicial manner (Article 12(2) RPBA 2020), auxiliary request 1, the only request now on file, forms part of the appeal proceedings." 
• The duty of the Board to review decisions to admit a case amendment was also acknowledged in T 0960/15.
• However, the amendment is found to be unclear. " Since the term "therapeutic agent" is open to interpretation or ambiguous, claim 1 lacks clarity within the meaning of Article 84 EPC."

• " Although a skilled person is able in most cases to decide whether a certain amount of a specifically defined product has a therapeutic effect or not (see decision T 151/01 of 9 February 2006, reasons 2.1), the "therapeutic agent" used in claim 1 defines far more than a specific class of compounds in a specific quantity having a therapeutic effect for a disease. It defines any known or yet unknown biologically active compound capable of treating or alleviating at least one disease state or condition. It is not limited to agents that are approved by a competent regulatory authority and/or are on a publicly available list of therapeutics. Hence, the respondent's argument that the skilled person would be able to determine from a list of approved therapeutic products whether any agent is a therapeutic agent or not, is not decisive in resolving the present clarity issue." 

•  The claim is directed to a delivery vehicle for a medicament, as I understand it, and reads: "1. A fully intact eubacterial minicell derived from a eubacterial parent cell, wherein the minicell comprises biologically active compound which is a therapeutic agent and displays an antibody or antibody derivative directed to a surface antigen of a cell for cell- or tissue-specific targeting of said eubacterial minicell, wherein the biologically active compound and the antibody or antibody derivative are exogenous to the parent cell and distinct from each other."

   

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0315/15 - Clarity attack admissible

Key points

• This case is an opposition appeal about clarity of an amended claim.
• The Board first notes that the amended claim is open to examination of clarity: "[feature] 1-17 [] was not part of the granted claims but was taken from the description. It is, therefore, open to clarity objections " 
• The Board however doubts whether to admit the clarity objection of the opponent, which raises the question whether a clarity objection is a new fact or a new argument. The Board: "[it] is also questionable whether a further clarity objection merely constitutes a new argument that has to be admitted in accordance with decision T 1914/12 and the jurisprudence of the Enlarged Board of Appeal on which it is based. However, the board is satisfied that the clarity objection raised by the appellant in its written submission []  constitutes a reaction to the [preliminary opinion of the Board]".
• The Board therefore admits the clarity objection of the opponent, and concludes that claim 1 is unclear: "[as] the feature under consideration is part of the charactering [sic] features and, therefore, decisive for delimiting the claimed subject-matter over the state of the art, claim 1 does not clearly define the matter for which protection is sought. Thus, claim 1 does not comply with the requirements of Article 84 EPC." 
• As a comment, I am not sure if the requirement of clarity is indeed stricter for the characterizing features in case a claim is drafted in two-part form according to established case law. The Board does not cite any case law.

EPO  T 0315/15 -  link

Consequently, the main request cannot be allowed.

2. Auxiliary request 1

2.1 Admissibility

Auxiliary request 1 corresponds to former auxiliary request 1, which was filed in response to the statement of grounds of appeal, with the exception of the replacement of "effected" by "affected" in claims 1 and 8. This amendment constitutes the correction of an obvious error. As a consequence, the board admitted the request into the proceedings.

2.2 Compliance of feature 1-17 with Article 84 EPC

Claim [sic] 1-17 ("such that by a downward movement of the bead the inside opening angle of the bead is not increased") was not part of the granted claims but was taken from the description. It is, therefore, open to clarity objections (see decision G 3/14 of the Enlarged Board of Appeal, published in OJ EPO 2015, A102).

2.2.1 Admissibility of the late-filed objection

The board cannot endorse the argument that a board of appeal has to examine ex officio the clarity of claims amended by incorporating features that are taken from the description. It is also questionable whether a further clarity objection merely constitutes a new argument that has to be admitted in accordance with decision T 1914/12 and the jurisprudence of the Enlarged Board of Appeal on which it is based. However, the board is satisfied that the clarity objection raised by the appellant in its written submission dated 9 February 2016  constitutes a reaction to the communication pursuant to Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA), and in particular, to the definition of the opening angle proposed in point 5.1.8 of that communication [note, of 07.05.2018; the Board may be referring to the opponent's letter of 12.02.2019]. The reaction was filed within the time limit defined by the board (one month before the oral proceedings, see point 7) and cannot, therefore, be considered to be late-filed. As a consequence, the objection cannot be dismissed as inadmissible.

2.2.2 Clarity of feature 1-17

As explained in point 1.1.2, the patent does not provide an unambiguous definition of what is meant by "opening angle". The skilled person trying to determine what exactly is covered by the claim would be at a loss. As the feature under consideration is part of the charactering [sic] features and, therefore, decisive for delimiting the claimed subject-matter over the state of the art, claim 1 does not clearly define the matter for which protection is sought. Thus, claim 1 does not comply with the requirements of Article 84 EPC.

As a consequence, auxiliary request 1 has to be dismissed. 

T 2186/14 - On the ashtray example

Key points

• In this examination appeal, the board finds claim 1 unclear. Claim 1 is directed to essentially a nasal spray device for spraying a medicine into a patients nose and has the feature that the device "is configured such that at least 30 % of the dose [of the medicine is deposited in a specific part of the nose], and thereby provides a [pain relieve] effect which is significantly greater than that predicted from a counterpart blood plasma concentration of the [medicine]".
• The appellant argues that these features meet the requirements for allowable 'result to be achieved' features according to GL F-IV.4.10.
• GL F-IV.4.10: "For example, the invention may relate to an ashtray in which a smouldering cigarette end will be automatically extinguished due to the shape and relative dimensions of the ashtray. The latter may vary considerably in a manner difficult to define whilst still providing the desired effect. So long as the claim specifies the construction and shape of the ashtray as clearly as possible, it may define the relative dimensions by reference to the result to be achieved, provided that the specification includes adequate directions to enable the skilled person to determine the required dimensions by routine test procedures "
• The present Board: "In this example [of the Guidelines about the ashtray], it is clear which structural features have to be appropriately designed to achieve the desired effect. The relative dimensions of the ashtray may vary but will always be such that a cigarette is automatically extinguished. However, in the present case, the specific structural features which have to be appropriately designed are not clear from the wording of the claim. The only structural features included in the claim are a nosepiece unit comprising a nozzle and a substance supply unit."
• I guess that the ashtray example was already in the first edition of the GL (still looking for those) and comes from some actual (older) decision of the German Patent Office (most likely) but I would like to learn more about that. Apparently, the self-extinguishing effect of the ashtray was due to both the shape and the relative dimensions and it was sufficient that the claim specified the shape of the ashtray as clearly as possible. 

EPO T 2186/14 -  link

3. Article 84 EPC

3.1 Article 84 EPC requires that the claims define the matter for which protection is sought in a clear and concise manner and that the claims be supported by the description. These requirements ensure that the public is not left in any doubt as to the subject-matter covered by a claim.

3.2 Claim 1 includes a functional feature, namely, that the delivery device is configured such that at least 30 % of the dose as initially deposited in the nasal airway is deposited in an upper posterior region of the nasal airway which is posterior of the nasal valve and above the inferior meatus.

G 2/19 - Decision - Haar for oral proceedings

Key points

• The Enlarged Board announced at the end of the oral proceedings on 16 July 2019 that holding oral proceedings before the Boards in Haar does not violate Article 113(1) and Article 116(1) EPC.
• The Board also decided that the appellant in the underlying case has no right to oral proceedings under the (rather specific) facts of the case, that the Notice of appeal was filed by a third party to the examination proceedings appealing the grant of the patent with the request for re-entry into the examination proceedings to address clarity issues. Moreover, the appeal has no suspensive effect.
• The reasoned written decision will follow in due course.

1. Ein Dritter im Sinne von Artikel 115 EPÜ, der gegen die Entscheidung über die Erteilung eines europäischen Patents Beschwerde eingelegt hat, hat keinen Anspruch darauf, dass vor einer Beschwerdekammer des Europäischen Patentamtes mündlich über sein Begehren verhandelt wird, zur Beseitigung vermeintlich undeutlicher Patentansprüche (Artikel 84 EPÜ) des europäischen Patents den erneuten Eintritt in das Prüfungsverfahren anzuordnen. Eine solchermaßen eingelegte Beschwerde entfaltet keine aufschiebende Wirkung.
2. Mündliche Verhandlungen der Beschwerdekammern an deren Standort in Haar verstoßen nicht gegen die Artikel 113 (1) und 116 (1) EPÜ. 

EPO BoA News item (link)

T 1981/15 - Rule 49(10) EPC and clarity

Key points

• In this examination appeal, the refusal was based on Article 84 and Rule 49(10) EPC, last sentence. That sentence reads: ""Only the technical terms, formulae, signs and symbols generally accepted in the field in question shall be used."
• The Board clarifies the meaning of the provision as follows: "The intention, in the opinion of the Board, is to prohibit the use of terminology (and formulae, signs and symbols) which would be misleading or unfamiliar to the person skilled in the art." 
• The Board then applies this rule to the term at issue.
• " While the term "leading" [in: "leading-end open line 50"; the invention is about a radio-frequency device], taken in isolation, might appear imprecise, the skilled person would, as set out above, understand from the claim that the open end is the distal end, remote from the pad. Labelling this end as the "leading" end does not add any new technical information, but neither can it be seen as misleading or detracting from the clarity of the claim. Hence, within the context of the subject-matter of claim 1, the Board finds that element 50 is described in a manner which is clear and comprehensible, using terms which would be understood by a person skilled in the technical field. The requirements of Article 84 and Rule 49(10) EPC are therefore met.

Reasons for the Decision

1. The appeal is admissible.

2. Article 84 and Rule 49(10) EPC

2.1 Claim 1 defines that the internal conductor pad includes a "leading-end open line 50". This term, which was present in the translation of the international application into English pursuant to Article 153(4) EPC, was objected to during the examination procedure under Article 84 and Rule 49(10) EPC for being "not generally accepted in the art" (see e.g. communication of 24 July 2014, point 1.1). As a result, this feature was amended to "slot line" in the version of the claims as refused. Since the term "leading-end open line 50" has been re-instated into claim 1 of the present main request, it is necessary for the Board to consider the objections previously raised against it.

2.2 The last sentence of Rule 49(10) EPC reads as follows:

"Only the technical terms, formulae, signs and symbols generally accepted in the field in question shall be used."

The intention, in the opinion of the Board, is to prohibit the use of terminology (and formulae, signs and symbols) which would be misleading or unfamiliar to the person skilled in the art.

2.3 In the present case, the term in question appears in claim 1 as follows:

"the internal conductor pad (5) includes a leading-end open line (50) having a length of a quarter of a wavelength of a radio-frequency signal used in the radio-frequency device (2)."

T 1957/14 - QTL's unclear

Key points

• In what appears to be an important decision for patents relating to plants and seeds, the Board decides that the claim at issue is unclear because it relies on QTL's (quantitative trait locus).
• The claim is directed to a maize plant having at least 14 QTL's, each QTL is defined by a pair or markers and by a position on a chromosome, each marker is essentially a DNA sequence which is given in the claim (SEQ ID), but the markers are not themselves the genes giving the advantageous properties (if I understand the technology correctly). More importantly is that QTL's are the most commonly used way to define conventionally bred plants in patent claims.
• "In the board's view, the skilled person may well understand the terms used in the claim and how to use the technology related to these terms in practice. Yet this understanding and these practical skills do not, in the present case, convey to the skilled person the structural features necessary to unambiguously characterise the alleles referred to in the claim."
•  "The alleles are moreover defined in claim 1 by further definitions in relation to the QTLs, i.e. the QTLs' supposed location on a chromosome, the QTLs' linkage to marker loci which in turn are defined by PCR primers identified by their sequence and the size of the amplification product " (as I tried to summarize above).
•  "In the board's opinion it is evident that none of these definitions provides the skilled person with any information about the structural features of the alleles themselves. Thus, the sequence of an allele is neither derivable from the QTL's supposed location on the chromosome nor from a characterisation of the markers linked to it, regardless of how extensive that characterisation is."
•  'Hence, the physical parameters of the alleles (see point 4 above), their structures, are not defined by the definitions in the claim. Consequently, the essential features characterising the claimed plant, the alleles (see point 3 above), are also not defined by the claim. For the above reasons, the board concludes that claim 1 lacks clarity."
• Added: The particular QTL's at issue were also defined by a reference to a deposited material. "in the board's opinion, the reliance on deposited inbred line material for the definition of the essential features of the invention and by requiring it to be analysed in order to identify the relevant alleles is at odds with the principle that, generally, the meaning of a claim, including its essential features, should be clear, for the person skilled in the art, from the wording of the claim alone "
• The  oral decision was given on 17 January 2018 so the written decision has taken some time to issue (on 30.11.2018). The claims in case T 1063/18 for which oral proceedings are publicly announced for 5 December 2018 also rely on QTL features. See here for a 2016 paper on patent claims and QTL's. See in particular pages 21 and 23 and in particular page 31. 

EPO T 1957/14 - link




Claim 1 of the main request reads:
"1. A maize plant characterized by a set of at least
14 QTLs each of which contributes to the phenotypic trait of grain yield as measured by quintals per hectare, wherein each of said QTLs is characterized by the presence of an allele of that QTL that contributes in a positive way to the phenotypic trait of grain yield, wherein each QTL is genetically linked to at least one marker locus selected from the group of loci characterized by at least one pair of linked markers each of which can be identified by a pair of PCR oligonucleotide primers consisting of a forward primer and a reverse primer exhibiting a nucleotide sequence as given in
(1) SEQ ID NO: 59/60 with an amplification product in a PCR reaction having a molecular weight of 120 bp and SEQ ID NO: 77/78 with an amplification product in a PCR reaction having a molecular weight of 85 bp, respectively, identifying a marker pair linked to QTLl, wherein QTL1 is located on chromosome 1 at a supposed position at 115.6 cM and is obtained from inbred line M3047/2 (NCIMB 41460); ...

Reasons for the Decision

Introduction and explanation of terms

1. The present invention relates to a maize plant "with a genome comprising a unique allele profile associated with the corresponding QTLs [quantitative trait loci] contributing to the expression of a variety of phenotypic traits of economic interest selected from the group of grain yield (...)" (see application, page 1, first paragraph). "The term "quantitative trait" has been used to describe a phenotype that exhibits continuous variability in expression and is the net result of multiple genetic loci presumably interacting with each other and/or the environment" (see application, page 1, fourth paragraph). The term "quantitative trait locus" (QTL) refers "to an association between a genetic marker and a chromosomal region and/or gene that affects the phenotype of a trait of interest" (see application, page 4, first full paragraph). A "genetic marker" is a "feature of an individual's genome (e.g., a nucleotide or a polynucleotide sequence that is present in an individual's genome) that is associated with one or more loci of interest" (see application page 4, lines 24 to 26). An "allele is understood, within the scope of the invention, to refer to alternative forms of various genetic units associated with different forms of a gene or of any kind of identifiable genetic element" and "an allele associated with a quantitative trait may comprise a single gene or multiple genes or even a gene encoding a genetic factor contributing to the phenotype represented by said QTL" (see application, page 2, fifth and sixth paragraph).

Main request

Clarity (Article 84 EPC) - claim 1

2. Article 84 EPC provides that the claims shall define the matter for which protection is sought and that they shall be clear and concise and be supported by the description. Rule 43(1) EPC further requires that the claims shall define the matter for which protection is sought in terms of the technical features of the invention.

The technical features of the invention are the physical features which are essential to it. The technical features of a claim to a physical entity are the physical parameters of the entity. In appropriate cases technical features may be defined functionally (see G 2/88, OJ EPO 1990, 93, Reasons, point 2.5).

The meaning of the technical features essential to the invention ("essential features") should be clear for the person skilled in the art from the wording of the claim alone (see decision G 1/04, OJ EPO 2006, 334, Reasons, point 6.2).

3. Claim 1 is directed to a maize plant (see section VI for the complete wording of the claim). The plant is characterised by "a set of at least 14 QTLs" and each QTL is characterised by "the presence of an allele of that QTL that contributes in a positive way to the phenotypic trait of grain yield".

Thus, the technical features essential for the invention are the alleles present in the QTLs because they are ultimately responsible for the phenotypic trait of grain yield.

T 0486/14 - Trademark metal alloy in claim

Key points

• In this opposition appeal, claim 1 of the auxiliary request differs from claim 1 of the main request in that the nickel-based superalloy is defined as being "Waspaloy".
• " WASPALOY is a registered trademark that refers to a nickel-based superalloy. The reliance on a trademark in claim 1 introduces a lack of clarity, since it cannot be guaranteed that the alloy referred to with the trademark WASPALOY has a single, established composition, nor that such composition stays constant over time." 
• " If alloys carrying the designation WASPALOY in 2018 would still contain Nb [as they did according to a 2006 document], it would be expected that the latter element would necessarily appear in the elements listed in the chemistry table of D16 ["a copy of a Wikipedia article relating to WASPALOY dated 17 May 2018"]. The trademark WASPALOY thus does not have such a well known meaning that would imply a constant and defined chemical composition belonging to common general knowledge of the skilled person. The introduction of the trademark WASPALOY in claim 1 thus renders the claim prima facie unclear." 
• Therefore, the AR filed during the oral proceedings is not admitted and the patent is revoked.

EPO T 0486/14 - link

2. Auxiliary request - admittance

2.1 Claim 1 of the auxiliary request differs from claim 1 of the main request in that the nickel-based superalloy is defined as being "Waspaloy".

2.2 The request was filed during the oral proceedings, hence at the latest possible stage in the proceedings, and the Board needed to exercise its discretion as to whether the request should have been admitted into proceedings in accordance with Article 13(1) RPBA. In order to be admitted, inter alia the aspect of procedural economy given in Article 13(1) RPBA should be considered, which implies at least that the request should be prima facie allowable in the sense that it overcomes the objections raised without giving rise to new objections. This is however not the case for claim 1 of this request, for the following reasons.

T 1608/13 - Clarity vs. Insufficiency

Key points

• The OD has revoked the patent for insufficient disclosure. Does this mean that in appeal, the patentee (appellant) has the burden of proof to show sufficiency of disclosure?
• The Board: " Referring to T 585/92 the respondent [opponent] argued that in appeal, after the Opposition Division had revoked the patent, the burden of proof was shifted to the appellant [patentee] to prove that the decision was wrong. However, the primary aim of appeal proceedings is to review the decision under appeal on the basis of the submissions and requests of the parties. This clearly encompasses the review of the Opposition Division's reasoning, in particular the assessment of the respondent's [opponent's] objections considered in the decision. If the reasoning as such is found to be wrong, there cannot be any shift of the burden of proof on the substance. " 
• The OD has conflated clarity and sufficiency, according to the Board. The parties did not dispute that there was a variability in the measurement of the sieving coefficient recited in claim 1.  
• " Clarity [] and sufficiency of disclosure [] are two distinct requirements of the EPC, as reaffirmed in recent case law []. In the present case, the technical problem which the invention aims to solve is how to improve the effectiveness of a blood treatment by providing a membrane [of product claim 1]. The Board does not see how [] a potential lack of clarity deriving from the claim definition of the sieving coefficient in the presence of whole blood could have a major impact on implementing a membrane which solves that specific problem. Hence, using the wording of T 608/07, with which the Board concurs, such a potential lack of clarity would not deprive the skilled person of the promise of the invention, and would not result in insufficiency of disclosure. As far as lack of clarity is concerned, it is not a ground for opposition." 

EPO T 1608/13 - link

The membrane according to the invention is characterised by parameters expressing its permeability for molecules of a certain molecular weight, in the presence of whole blood and water respectively.

3. In the impugned decision, the Opposition Division held that the invention as defined in claim 1 of the patent as granted was not sufficiently disclosed, mainly for two reasons (point 3 of the reasons): the patent did not provide sufficient information to enable the skilled person to determine the parameters defined in claim 1 and example 1, and the invention could not "be worked over the whole range claimed". The respondent endorsed the Opposition Division's view and provided supporting arguments.

3.1 Referring to T 585/92 the respondent argued that in appeal, after the Opposition Division had revoked the patent, the burden of proof was shifted to the appellant to prove that the decision was wrong. However, the primary aim of appeal proceedings is to review the decision under appeal on the basis of the submissions and requests of the parties. This clearly encompasses the review of the Opposition Division's reasoning, in particular the assessment of the respondent's objections considered in the decision. If the reasoning as such is found to be wrong, there cannot be any shift of the burden of proof on the substance. As regards the latter, it is established jurisprudence that a successful objection of lack of sufficiency presupposes that there are serious doubts substantiated by verifiable facts (T 967/09 and other cases cited in Case Law of the Boards of Appeal of the European Patent Office, 8th edition 2016, III.G.5.5.2.2). It is primarily the respondent's duty to provide such facts in support of its objections.

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.

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)).

T 1188/15 - Article 69 and sufficiency

Key points

• The case deals with insufficient disclosure of a parameter that is poorly defined in the claim. The Board is from the outside quite clear that the invention is not sufficiently disclosed. The argument that the specification provides information about the meaning of the parameter recited in the claims, is not accepted, in view of Article 69 EPC.
• " The appellant's argument that Article 69 EPC provided a basis for the skilled person to only consider stretch along the length of the waistband is not persuasive. At no time has a question regarding the clear linguistic structure, scope or meaning of the subject-matter of claim 1 been raised which could provide justification for interpretation of this in the light of the description." 

T 1188/15 - link

VIII. Claim 1 of both the main request and auxiliary request 1 reads as follows:

"An article of apparel (10) comprising:
a pelvic region (120) for covering a pelvic area (20) of a wearer (100), the pelvic region defining a waistband (22) for extending around a waist of the wearer, the waistband having a first layer that defines a portion of an exterior surface (13) of the apparel, the first layer being formed from a first woven textile (11) that exhibits at least thirty percent stretch prior to tensile failure, and the waistband having a second layer that defines a portion of an interior surface (14) of the apparel, the second layer being formed from a second woven textile (12) that exhibits less than ten percent stretch prior to tensile failure; and
a pair of leg regions (30) for covering at least a portion of legs of the wearer, a majority of the exterior surface and the interior surface of the apparel in the leg regions being formed from the first woven textile."

Reasons for the Decision

1. Main request

1.1 Article 100(b) EPC

The ground for opposition under Article 100(b) EPC prejudices the maintenance of the patent according to the main request (as granted).

1.2 The skilled person is unable to carry out the invention according to the main request at least because no direction of measurement of the claimed stretch prior to tensile failure of the woven textiles is given in claim 1 and, already from common general knowledge, the skilled person is aware that woven textile materials exhibit different stretch behaviour dependent upon the direction of measurement.

[...]

1.5 The appellant's argument that the measurement direction of the claimed stretch was clearly along the length of the waistband, and that any other interpretation would be obtuse, is not accepted. Claim 1 itself provides no indication in this respect, with the parameter 'stretch prior to tensile failure' simply being given range limits of at least thirty percent and less than ten percent, without any indication, even implicit, of the direction in which this is to be measured. The reference to col. 4, lines 48 to 55 of the patent specification referring to securing of the apparel to the individual does not help in this respect, not least as this concerns a particular embodiment of the invention in the form of water shorts (see paragraph [0017]), whereas claim 1 has a far broader scope covering simply an article of apparel with a waistband and a pair of leg regions. 

1.7 The appellant's argument that Article 69 EPC provided a basis for the skilled person to only consider stretch along the length of the waistband is not persuasive. At no time has a question regarding the clear linguistic structure, scope or meaning of the subject-matter of claim 1 been raised which could provide justification for interpretation of this in the light of the description. The Board also sees no difficulty with the meaning of claim 1, the claim simply being of a broad scope, specifically encompassing stretch prior to tensile failure in any direction whatsoever of the first and second woven textile in any article of apparel having the defined features. The skilled person thus has no requirement to interpret the claim in a more limited sense in the light of a specific embodiment of the description to which the claim is not limited, the claim itself imparting a clear and credible technical teaching to the skilled reader.

T 0313/13 - Functional feature thus clear

Key points

• The Board finds the expression "nearly abutting" in the claims to be clear in this examination appeal, because it is considered as a "functional feature".

EPO T 0313/13 - link


3. Article 84 EPC 1973
The appellant has introduced the expression "nearly abutting" several times in the amended independent claims. This expression was objected to for lack of clarity, because it was vague (see point 2.2 of the decision under appeal).


The board notes that the wording of a claim has to be clear in itself (see T 454/89 of 11 March 1991).


In view of the passages of the description referred to by the appellant, in particular [0052] of the application as filed, the board interprets "nearly abutting" as a functional feature.


Paragraph [0052] reads "... a distance of separation for nearly abutting key structures corresponds to a distance that is of the order of a tolerance level for assembling the housing and interconnecting components or layers (excluding the actual keypad)) [sic] to make the keyboard effective. That is to say, as close together as the manufacturing process can achieve whilst reliably providing independent movement of one key structure relative to an adjacent key structure" (emphasis added).
Taking the expression "nearly abutting" to be a functional feature, the board considers the independent claims comprising these words to fulfil the requirements of Article 84 EPC 1973.

T 1107/15 - Clear parameter feature

Key points

• The Examining Division had refused an application because claim 1 specified a parameter which would be unclear. The Board notes that the application teaches in sufficient detail how to perform the measurement. Therefore, Articles 3 and 84 are complied with. Hence, the claim itself did not need to specify the measurement method.

T 1107/15 - link

IV. Claim 1 of the main request reads as follows:

"A tantalum sputtering target having a purity of 99.999% or more excluding niobium and gas components, characterised in that the target has a composition consisting of: tantalum; and
niobium in a concentration of 1 mass ppm or more and 100 mass ppm or less with the remainder being unavoidable impurities, wherein variation of the niobium content in the target is ±20% or less."

Reasons for the Decision

1. Main request

1.1 Impugned decision

According to the impugned decision (reference to the communication of the examining division of 13 November 2014, "First auxiliary request"), the feature the "variation of the niobium content in the target is ±20% or less" of claim 1 leads to:

- lack of clarity of the claim; and

- lack of enablement for the skilled person to perform the claimed invention.

As the size of the sampling was held to influence the result for this parameter, it would not be clear for the skilled person whether he would be working within or outside the scope of claim 1 (Article 84 EPC).

T 0745/11 - Broad but clear

Key points

• The Board reiterates, as established case law, that broad claims are not per se unclear.
• The Board finds that it is not relevant that the term at issue possibly has no clear, unitary, objective and widely accepted definition. The requirement of clarity of Article 84 EPC does not require, that each term used in a claim is entirely clearly defined. Rather, it is desirable to use terms of the art with a precise meaning when formulating the claims. Even the jargon of the art does not, generally, involve a completely clear or formally defined semantics. As a rule, the applicant should have the possibility to define the invention in the claims in the usual language (jargon). In the opinion of teh Board, it is desirable that, if an Examining Division considers the generally used jargon to be unclear, the Examining Division indicates, which specific problem of interpretation or limitation the term at issue causes. 

EPO T 0745/11 - link

Hauptantrag - Klarheit

3. Bei dieser Beschwerde geht es ausschließlich um das Erfordernis der Deutlichkeit nach Artikel 84 EPÜ und insbesondere darum, ob die Zurückweisung der Anmeldung wegen der Verwendung des Ausdrucks "Funktion" in Anspruch 1 gerechtfertigt war.

3.1 In der Entscheidung wird nicht ausgeführt, welche konkreten Auslegungsprobleme oder Abgrenzungsprobleme (zum Beispiel Unsicherheit bei der Abgrenzung gegenüber einem Dokument, das zum Stand der Technik gehört) sich für das beanspruchte Verfahren aufgrund der behaupteten Unklarheit des Begriffs "Funktion" ergeben.

3.2 Die Entscheidung legt auch nicht näher dar, wie eine deutlichere Angabe des Verfahrens hätte erfolgen können. Hierzu wird durch die Prüfungsabteilung ohne weitere Begründung lediglich festgestellt, dass die von der Anmelderin im seinerzeitigen Hauptantrag vorgenommene Einschränkung, dass die technische Funktion "eine elektrische, eine mechanische oder eine optische Funktion" darstellt, nicht dazu beitragen könne, den Funktionsbegriff selbst klarzustellen.

Diese Argumentation deutet darauf hin, dass die Entscheidung den Kontext des für unklar erachteten Begriffs nicht ausreichend berücksichtigt.

3.3 Die Richtlinien für die Prüfung, November 2015, führen unter F-IV, 4.2 zur Auslegung von Ansprüchen folgendes aus:

"Der Wortlaut eines jeden Patentanspruchs ist so zu verstehen, dass sich für die einzelnen Wörter die Bedeutung und die Reichweite ergeben, die sie auf dem betreffenden Gebiet normalerweise haben, es sei denn, die Beschreibung verleiht den Wörtern in bestimmten Fällen durch ausdrückliche Definition oder auf andere Weise eine besondere Bedeutung. [...] Der Patentanspruch muss auch so gelesen und verstanden werden, dass er technisch einen Sinn ergibt."

Nach der ständigen Rechtsprechung der Beschwerdekammern ist die Breite eines Anspruchs jedenfalls nicht mit mangelnder Klarheit gleichzusetzen, ein breiter Anspruch ist somit nicht per se undeutlich (siehe Rechtsprechung der Beschwerdekammern des Europäischen Patentamts, II.A.3.3).

T 0921/11 - Incomprehensible claims

Key points

• In this examination appeal with a Microsoft entity as applicant, Board 3.4.01 finds that "the terms of the claims are so vague that the claims definitions become virtually incomprehensible."
• Claim 1 for a " system"  is furthermore unclear because it is unclear whether it is a process or not.

Summary of Facts and Submissions

VII. Claim 1 of the main request reads:
"A system for the generation of a description for a flattened data structure which is a tabular listing, comprising:
a data structure (102) having a plurality of data nodes (104-108), wherein the data structure (102) is hierarchical;
characterized by
a valuation component (112) that assigns a valuation to one or more of the data nodes (104-108) in accordance with a predetermined metric wherein the predetermined metric is one of a plurality of metrics that are used for determining the valuation, which plurality of metrics include time created, that the node (108) was accessed, time the node (108) was accessed, that the node (108) was modified, when the node (108) was modified, that the node (108) was copied, an access frequency, and a number of unique users who have accessed the node (108); and
a description component (116) that generates a description that represents at least one of the one or more data nodes (104-108) that is selected according to the metric."

Reasons for the Decision

3. Main request - Article 84 EPC 1973

3.1 The claims are not clear as a whole.

Independent claim 11 refers to a "computer readable medium having stored thereon computer executable instructions for carrying out the system of claim 1".

The selected wording is confusing in that it suggests that the system "for the generation of a description for a flattened data structure" of claim 1 could possibly relate to a process.

No clear indication can be derived from the description as to the actual meaning associated to the term "system". In the contrary, the statement in paragraph [0012] of the application as published adds to the confusion since it specifies;|

 "As used in this application, the terms "component" and "system" are intended to refer to a computer-related entity, either hardware, a combination of hardware and software, software, or software in execution. For example, a component can be, but is not limited to being, a process running on a processor, a processor, an object, an executable, a thread of execution, a program, and/or a computer. By way of illustration, both an application running on a server and the server can be a component. One or more components can reside within a process and/or thread of execution, and a component can be localized on one computer and/or distributed between two or more computer."

Should the term "system" in claim 1 indeed be equated with a process, claim 11 would then be redundant with claim 23.

On the other hand, should the term "system" in claim 1 be equated with the term "software", as suggested in paragraph [0012] of the published description, the requirements of article 52(2)(c) EPC would not be met. In this case, the Board fails, namely, to identify any technical contribution in the mere evocation of the functions to be performed by the "system" of claim 1. A consequence of this finding would then be that claim 1 defines a computer program "as such", excluded from patentability under Article 52(3) EPC.

It is therefore considered that the claims as a whole, construed in the light of the description, are so unclear as to the meaning of the term "system" that the skilled reader is neither in a position to recognize the nature of the claimed subject-matter nor the category to which claim 1 belongs. This finding reflects itself in all the claims which refer, by way of dependency or mere reference, to claim 1.

3.2 The terms of the claims are so vague that the claims definitions become virtually incomprehensible.

The expressions "description for a flattened data structure" in claim 1 and "names of a data structure" in claim 13 are obscure, so that it is not clear what exactly the claimed system and method would generate, respectively.

Moreover, it is unclear from claim 1 what "data nodes" (claim 1, lines 3-4) of a "data structure" would be when the latter is in the form of a "tabular listing" (claim 1, lines 1-2). The appellant appears to suggest (page 8, first paragraph of the grounds of appeal) that claim 1 should be understood as referring to two separate "data structures", a "flattened" one in the form of a "tabular listing" being a transformation from another "data structure" which is "hierarchical". However, such an interpretation further increases confusion since the claim wording would imply that the two data structures coexist in parallel.

Likewise, the terms "valuation component" (claim 1) and "valuation" (claims 1 and 13) have no clear meaning. In particular, it is unclear which purpose a "valuation" would serve and how it is related to a "description" (claims 1, 6, 9 and 15), a "name" and "node metadata" (claim 13).

3.2.1 The definition in claim 1 "that assigns a valuation to one or more of the data nodes (104-108) in accordance with a predetermined metric wherein the predetermined metric is one of a plurality of metrics that are used for determining the valuation" and a corresponding definition in claim 13 are circular definitions and thus practically meaningless.

3.2.2 It is not clear from claims 1 and 13 what exactly is meant by the term "metric" and how, by which element of the claimed system and according to which criterion such a "metric" would be "predetermined".

Unclarity arises in particular from some of the options listed in claims 6 or 15 in combination with several of the metrics listed in claim 1 or 13, respectively. For instance, it is difficult to imagine what a "valuation" in the form of "image data" (claims 6 and 15) or a "coloration" (claim 6) would mean for a "metric" of the type "time created" or "time the node was accessed".

3.2.3 Claim 1 is contradictory in itself in that the claimed system is specified to serve "for the generation of a description for a flattened data structure", whereas a "description component" "generates a description that represents at least one of the one or more data nodes" (emphasis added).

The complement "that is selected according to the metric" is not understood in the context of said flattened data structure.

3.2.4 The nature and role of the "predetermined valuation limit" for "selecting one or more of the plurality of nodes" in independent claim 13 are obscure.

Likewise, it is not clear from where "node metadata" would be retrieved and how exactly retrieval of a name for a node "based on the respective node metadata" could be accomplished.

3.2.5 The expression "processed for viewing" and the term "one-dimensional view" given in claim 2, respectively, claims 3 and 14, in the context of a selection of data nodes have no readily recognizable meaning.

The additional features according to claim 10 are enigmatic because, in the given context, the terms "facilitates", "selected operations" and "inference" have no unambiguous meaning.

From claim 18 it is unclear according to which criterion or criteria "node metadata" would be qualified as being "unimportant".

The phrase "and one of the same and different" in claim 19 is not understood.

As regards claim 21, it is unclear from where a "folder name" and a "file name" would be known and how exactly these items would be used for generating "names".

3.3 For these reasons, the main request is not allowable.

T 2067/12 - Result to be achieved

Key points

• The Board decides on clarity of a functional feature " defin[ing] the device by a technical result to be achieved". The Board states that in accordance with established case law  such features are permissible in a claim " if (i) from an objective viewpoint they could not otherwise be defined more precisely without restricting the scope of the invention, and (ii) if they provide instructions that are sufficiently clear for a skilled person to be able to reduce them to practice without undue burden, if necessary with reasonable experiments [] In other words, the functional feature must not only be such that the skilled person can understand it, but he must also be able to implement it in accordance with the requirements of Article 84 EPC."  (As a comment, I am not sure whether this introduces an element of sufficiency of disclosure)
• The Board finds that in this case, the functional feature defines an advantage of the device in its functioning state. Thus, the functional feature amounts to a mere desideratum. " It is not apparent how such a broadly defined desideratum could provide the skilled person with instructions which are sufficiently clear to enable him to reduce them to practice" . Therefore, the requirement (ii) is not complied with. 

EPO T 2067/12 - link

Reasons for the Decision

1. Amendments

1.1 Claim 1 of the sole request differs from claim 1 as granted in that the device is further defined by indicating at the end of the claim that

"and only the needles that have been inserted into the product deliver liquid".

This feature is based on page 2, lines 5 to 6 of the application as filed (see also paragraph [0006] of the patent specification).

The amendment was made during the opposition proceedings in order to establish novelty over a public prior use involving device MBI-135-C No. 420 (D6). The opposition division had denied novelty of granted claim 1 because this known device disclosed both the features of the preamble of claim 1 and the characterising part, namely that locking means were provided for locking the needles in their position projecting relatively less far out of the holder.

1.3 The amendment amounts to the introduction of a functional feature into the claim, in the sense that it now defines the device by a technical result to be achieved, that is to say the locking means (15) of the device are to be constructed in such a way that they ensure that "only the needles that have been inserted into the product deliver liquid" (and, by implication, that those not inserted do not deliver liquid).

1.4 As the claim has been amended by introducing a feature taken from the description, it is first necessary to examine whether it fulfils the clarity requirements of Article 84 EPC.

1.4.1 In accordance with established case law of the boards of appeal, functional features defining a technical result are permissible in a claim if (i) from an objective viewpoint they could not otherwise be defined more precisely without restricting the scope of the invention, and (ii) if they provide instructions that are sufficiently clear for a skilled person to be able to reduce them to practice without undue burden, if necessary with reasonable experiments (see decision T 68/85, OJ 1987, 228, headnote). In other words, the functional feature must not only be such that the skilled person can understand it, but he must also be able to implement it in accordance with the requirements of Article 84 EPC.

Concerning the first criterion it is noted that the patent specification in paragraphs [0007] to [0009] describes technical features of a locking system that ensure that only the needles that have been inserted into the product deliver liquid and that they do this both when they are being pushed into the product and when they are being extracted from it.

1.4.3 Whether or not the introduction of these specific technical features would unduly restrict the scope of the invention can be left unanswered because the functional feature does not in any case fulfil the second criterion, namely it does not provide clear instructions of how to put it into practice. This is the case for the following reasons:

- Firstly, the functional feature defines an advantage of the device in its functioning state, as can be seen from paragraph [0006] of the patent specification. Thus, the functional feature amounts to a mere desideratum. It is not apparent how such a broadly defined desideratum could provide the skilled person with instructions which are sufficiently clear to enable him to reduce them to practice (see in this context point 8.4.3 of T 68/85). It is, for example, not clear whether and how the added functional feature is interrelated with the locking means (15), whether the control of the delivery of liquid occurs automatically or via the locking means (15), or which other means are envisaged.

Moreover, this lack of clarity is aggravated by the fact that the use of the device includes a first descending step of inserting the needles into the product and a second ascending step of extracting them. Although it is mentioned in paragraph [0006] of the patent specification that the needles deliver liquid both when they are being pushed into the product and when they are being extracted from it, this is not clear from the wording of the claim itself, which is open on this issue.

1.5 In summary, the functional definition present in claim 1 cannot be accepted and the claim does not fulfil the requirements of Article 84 EPC.

2. Consequently, the respondent's request is not allowable.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

T 1773/10 - Amendments in grounds

Key points

• The Boards decide on sets of claims as requests only, also in examination appeals. Indicating possible amendments in (the text of) the Statement of ground does not work. The Board states that it "must disregard substantive requests that do not clearly define the text which should form the basis for the grant of a patent (Article 113(2) EPC)"

T 1773/10 - link

Summary of Facts and Submissions

I. The applicant (appellant) appealed against the decision of the Examining Division to refuse the European patent application no. 03738745.3 which was originally filed as international application PCT/KR2003/001317 and published as WO 2004/006252.

V. As indicated in the statement of grounds of appeal (see in particular section 6), the appellant requested that the decision under appeal be set aside and a patent be granted on the basis of the main request, and if necessary, with one or more of the "alternative amendments indicated in section 5 of the statement of grounds of appeal".

T 0799/12 - Clarity in oppostion-appeal

Key points

• The Board admits a clarity objection submitted in appeal against amendments made before the opposition division.
• The Board: " Whilst it is true that in principle the appellant could have raised the clarity objection during the opposition proceedings, he did so for the first time in the statement of grounds of appeal, whereby the respondent and the Board had ample time to consider it. "

EPO T 0799/12 - link

Reasons for the Decision

[] 3. Article 84 EPC

3.1 Admissibility

3.1.1 The respondent considered that the objection under Article 84 EPC was inadmissible. It argued that although the objection concerned a feature which had already been added to claim 1 during opposition proceedings, the objection had not been raised before the Opposition Division. Accordingly, no first-instance decision had been given on this matter.

The respondent is right in observing that the primary purpose of an appeal is to provide the adversely affected party with the opportunity to challenge the decision on its merits and to obtain a judicial ruling as to whether the first-instance decision was correct (G 9/91; OJ 1993, 408). However, according to established jurisprudence (G 9/91, point 19 of the Reasons), if amendments are made to the claims in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC. Whilst it is true that in principle the appellant could have raised the clarity objection during the opposition proceedings, he did so for the first time in the statement of grounds of appeal, whereby the respondent and the Board had ample time to consider it. The Board is therefore of the view that the lack of a first-instance ruling on the clarity objection is not sufficient reason to disregard the objection in the appeal proceedings.

3.1.3 The objection under Article 84 EPC is hence admissible.

T 2325/12 - Compatible not clear

Key points

• The term " compatible"  was held to cause a lack of clarity.

T 2325/12 - link

Fourth auxiliary request - clarity

6. Claim 1 of the fourth auxiliary request corresponds to claim 1 of the main request with the addition as a further ingredient of "(e) optionally an antitartar agent, wherein the antitartar agent is compatible with the antibacterial ester, or the antitartar agent is incompatible with the antibacterial ester and is included in one component of a dual component oral composition system in which a first component contains the antibacterial ester and a second component contains the antitartar agent".

6.1 There is no definition in the claim of what is meant by the terms "compatible" and "incompatible" with regard to the (in)compatibility of the antitartar agent with the antibacterial ester. The Board is not aware of any definition of the term commonly accepted in the field, nor any evidence in this respect has been provided by the appellant.