June 2015
Full Disclosure Patent Newsletter
Authored by Daryl Penny
Lack of clarity is not a ground of opposition at the European Patent Office (EPO). However, a recent decision from the EPO's Enlarged Board of Appeal, G3/14,1 held that clarity can be examined when an amendment is made during opposition, but "only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC"2 (i.e., introduces a lack of clarity). Lack of clarity does not arise where (1) the amendment consists of the literal insertion of a granted dependent claim into an independent claim, or (2) alternative embodiments contained in a dependent claim are introduced into an independent claim. Effectively, then, the dependent claims are unimpeachable, but amendments relying upon wording taken from the specification are open to attack for lack of clarity.
Following grant of a European patent by the EPO, there is a nine-month window within which an opposition may be filed against the grant.3 The only grounds on which an opposition may be filed are that the subject matter of the European patent is expressly excluded or excepted from patentability;4 lacks novelty5 or an inventive step;6 is not susceptible of industrial application;7 or extends beyond the content of the application as filed;8 or that the patent 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.9 In particular, lack of clarity is not a ground for opposition at the EPO.
However, when amendments are filed during opposition proceedings, Article 101(3) of the European Patent Convention (EPC) states that, "[i]f the Opposition Division is of the opinion that, taking into consideration the amendments made . . ., the patent and the invention to which it relates [. . .] meet the requirements of this Convention, it shall decide to maintain the patent as amended . . . ."10 (emphasis added). When considering or objecting to amendments made during opposition proceedings, then, there is a tension between whether objection can be raised (1) only on the basis of the limited list of grounds for opposition or (2) on a wider basis, in view of the seemingly more general reference to a need to "meet the requirements of this Convention."
This has resulted in difficulties for patentees, opponents, and EPO opposition divisions considering whether an amended claim, which could be considered to lack clarity, should be allowed, as there is no explicit basis in the EPC for objecting to such an amendment solely on grounds of lack of clarity.
In attempting to address this issue, different EPO Technical Boards of Appeal (hearing appeals from first-instance decisions of EPO opposition divisions) have interpreted the EPC in diverging ways.
For example, in T301/87, the board set out the principle that, when amendments were made to a patent during an opposition, the EPC required consideration as to whether the amendments introduced any contravention of any requirement of the Convention, including Article 84 EPC. However, objections were not allowed to be based on Article 84 EPC if such objections did not arise out of the amendments made.11 More specifically, in T1855/07, the board took the view that, in principle, an examination of clarity did not come into question where a dependent claim as granted was inserted literally into the claim under scrutiny, whereas substantial amendments to the claim were to be assessed to ensure their compliance with the requirements of the EPC.12
Nevertheless, in T459/09, the board held that clarity of an amended independent claim should, in principle, be examined, even if the amendment only consists of a mere, literal combination of claims of the patent as granted.13 That is, irrespective of the manner in which the patent is modified, the amended patent should be examined to ensure compliance with all the requirements of the EPC.14 Any other approach would risk unduly restricting the mandate for examination of an amended patent provided by Article 101(3) EPC. Thus, the board distinguished between a power of examination that is restricted to the grounds for opposition in cases where the claims are unamended, and an unrestricted power to examine claims that have been amended during opposition or appeal. Similarly, in T409/10, the board held that any amendment that can be qualified as being of a substantial nature would in principle justify an unrestricted exercise of the examination power derivable from Article 101(3) EPC, including the examination of clarity, independently of whether the amendment arises from the incorporation of a feature from the description or from the combination of claims of the granted patent.15
Thus, whether an opponent could object to, and an opposition division or board of appeal could examine, particular types of claim amendments during opposition proceedings depended upon which line of cases the opposition division or appeal board chose to follow.
The opposition and subsequent appeal that gave rise to this Enlarged Board decision related to European Patent No. 1,814,480 ("the '480 patent"), in the name of Freedom Innovations, LLC. Claim 1 recited a prosthetic medical device comprising a prosthetic liner and claim 7 recited a process for its manufacture. The opponent, Otto Bock Healthcare GmbH, had been successful in having the '480 patent revoked at first instance for lack of inventive step. On appeal, the patentee filed an auxiliary request for maintenance of the '480 patent in which the independent claim was amended by adding the subject matter of dependent claim 3 as granted, namely, to specify that "the prosthetic liner is coated over substantially all of its surface area." The opponent argued that this request should be refused for noncompliance with Article 84 EPC, because the term "substantially" rendered the claim unclear. To support its position, the opponent relied upon the case law discussed above, which supported a broad approach to the examination of clarity in opposition proceedings. To the extent that other case law came to a different conclusion on this point, the opponent argued that the jurisprudence of the Boards of Appeal was not therefore consistent and that a referral to the Enlarged Board of Appeal should be made for the purpose of ensuring a uniform application of the law.
The appeal board agreed that there was a divergence in the case law on this point and referred the following (paraphrased) questions to the Enlarged Board of Appeal:
1. Does the term "amendments" encompass a literal insertion of (a) elements of dependent claims as granted and/or (b) complete dependent claims as granted into an independent claim, so that such amendments always require an examination for clarity?
2. If yes, is the examination of clarity limited to the inserted features or may it extend to other features in the claim?
3. If the answer to Question 1 is no, is an examination of the clarity of independent claims so amended always excluded?
4. If such clarity examination is neither always required nor always excluded, what conditions apply in deciding whether to examine clarity?
After providing a detailed review of the case law, the Enlarged Board held that "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."16 The Enlarged Board thus approved the conventional line of jurisprudence, and disapproved the other, broader or diverging decisions. The Enlarged Board elaborated on some specific points:
1. Considerations of clarity under Article 84 EPC do not come to an end upon grant of a European patent. 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 light of those new features, whether considered by themselves or in their combination with other parts of the claim as now amended.17
2. The requirements of Article 84 EPC play no role in opposition proceedings where the patentee seeks to have the patent upheld as granted. A granted claim may turn out not to comply with Article 84 EPC, but such noncompliance must be lived with (although lack of clarity may have a negative impact on the consideration of sufficiency, or of novelty or inventive step of the claim).18
3. When amendments to the claims in opposition proceedings are necessary to overcome a ground of opposition, the focus is on how the amendments have changed the claimed subject matter vis-à-vis the previous claims and not other aspects of the patent or the claims that remain unchanged. Amendments must not themselves give rise to new objections under the EPC.19
4. Where an amendment involves combining an independent claim with a complete dependent claim—a so-called combination claim—the claim which is in place after the amendment is in reality and substance not a new claim. It was already in the granted patent, albeit written in a shortened form as a dependent claim. As such, clarity in relation to such an amendment is not open to objection under Article 84 EPC.20
5. Where a granted dependent claim recites a number of alternative embodiments and the amendment involves combining an independent claim with one of the alternatives from the dependent claim, the dependent claim could have been written out as two (or more) separate dependent claims. As such, this type of amendment is in substance no different from that in point 4 above.21
6. This is also the case, for the same reasons, with:
(a) amendments consisting of deleting wording from a granted (independent or dependent) claim, thereby narrowing its scope, but leaving intact a pre-existing lack of compliance with Article 84 EPC, and(b) amendments consisting of deleting optional features from a granted (independent or dependent) claim.22
7. For an amendment by means of which features are disconnected from other features of a dependent claim, thereby introducing an alleged lack of compliance with Article 84 EPC, it has never been doubted that the claim may be examined for such compliance. However, where the alleged lack of compliance has not been introduced by the amendment, clarity under Article 84 EPC should not be considered.23
This decision provides increased certainty over the circumstances under which clarity can be considered when claims are amended during opposition proceedings. Opposition divisions, appeal boards, opponents, and patentees should now have a clearer understanding of when it is and is not permissible to consider the clarity of amended claims and therefore which attacks and defenses might be most likely to succeed.
Patentees faced with the need to amend claims during opposition proceedings should try where possible to source the amendment from the dependent claims. Preferably, the amendment would introduce a complete dependent claim, or one of a number of alternatives recited within a dependent claim. Amendments sourced from the description or by removing individual features from a prior combination of features in a dependent claim may well open the door to objections for lack of clarity under Article 84 EPC. Where amendments are made that do not affect a pre-existing, unclear term in a claim, however, clarity objections cannot be raised and should not be entertained.
Opponents cannot argue lack of clarity over a claim in its granted form, or over a claim amendment that consists of the combination of an entire dependent claim, or an alternative embodiment from a dependent claim, with an independent claim. If such a granted or amended claim has a pre-existing, unclear term in it, consideration should instead be given to attacking the claim on the basis of a lack of sufficiency24 (the claimed invention is not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art), lack of novelty,25 or lack of inventive step.26 However, when amendments made during opposition proceedings do introduce a clarity problem, opponents may then attack the amendments under Article 84 EPC.
Endnotes
1 http://www.epo.org/law-practice/case-law-appeals/recent/g140003ex1.html.
2 The European Patent Convention (http://www.epo.org/law-practice/legal-texts/epc.html).
3 Opposition filing: Article 99(1) EPC
4 Excluded/excepted: Article 100(a) EPC in combination with Article 52 or 53 EPC.
5 Novelty: Article 100(a) EPC in combination with Articles 52(1) and 54 EPC.
6 Inventive step: Article 100(a) EPC in combination with Articles 52(1) and 56 EPC.
7 Industrial applicability: Article 100(a) EPC in combination with Articles 52(1) and 57 EPC.
8 Added subject-matter: Article 100(c) EPC; cf. Article 123(2) EPC.
9 Insufficiency: Article 100(b) EPC; cf. Article 83 EPC.
10 Article 101(3) EPC in full: "If the Opposition Division is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during the opposition proceedings, the patent and the invention to which it relates (a) meet the requirements of this Convention, it shall decide to maintain the patent as amended, provided that the conditions laid down in the Implementing Regulations are fulfilled; (b) do not meet the requirements of this Convention, it shall revoke the patent."
11 T301/87, points 3.7 and 3.8 of the Reasons.
12 T1855/07, points 2.2 and 2.3 of the Reasons.
13 T459/09, point 4.1.6 of the Reasons.
14 T459/09, point 4.1.3 of the Reasons.
15 T409/10, point 3.1 of the Reasons.
16 G3/14, point 85 of the Reasons.
17 G3/14, point 54 of the Reasons.
18 G3/14, point 55 of the Reasons.
19 G3/14, points 56 and 62 of the Reasons.
20 G3/14, point 80 of the Reasons.
21 G3/14, point 82 of the Reasons.
22 G3/14, point 83 of the Reasons.
23 G3/14, point 84 of the Reasons.
24 Article 100(b) or Article 83 EPC.
25 Article 100(a) or Article 54 EPC.
26 Article 100(a) or Article 56 EPC.
Originally published in Finnegan's Full Disclosure Newsletter, June 2015. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
Hybrid Conference
2024 California Intellectual Property Law Institute
October 21-22,2024
San Francisco
Conference
4th Annual Passport to Proficiency on the Essentials of Hatch-Waxman and BPCIA
October 8-24, 2024
Virtual
Conference
2024 Corporate Counsel Women of Color: Career Strategies Conference
October 2-5, 2024
Las Vegas
Hybrid Conference
2024 New York Intellectual Property Law Institute
September 30 - October 1, 2024
New York
Hybrid Conference
2024 Patent Law Institute: Critical Issues & Best Practices
September 30 - October 1, 2024
New York
Seminar
Intellectual Property in the Age of AI: What Do You Own and How Do You Balance Risks?
September 25, 2024
Boston
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.