G 0003/14 - Clarity in oppostion proceedings - #16

Citation rank: 16
No. of citations: 186

G 3/14 ranks #16 on the list of the 100 most-cited Boards of Appeal decisions of all times, but it is certainly record-holder in terms of citations per year! (see graph right/above)

The decision is concerned with the question of how the requirement of the EPC that a claim should be clear, concise and supported by the description (Art. 84 EPC) is to be treated in opposition and opposition-appeal.

The question arises from the fact that Art. 100 EPC limits the available grounds of opposition to the ones listed in that Article (and Art. 84 is not among them), but Art. 101(3)(b) on the other hand states an opposition must revoke a patent which has been amended in opposition and no longer "meets the requirements of [the EPC]".

The case law concerning the question was divergent. Some Boards were of the opinion that clarity objections against amended claims are to be examined in opposition only to the extent that the clarity objections result from the amendment(s) (e.g., T 301/87). Other Boards, starting with T 1459/05, allowed opposition divisions more flexibility. In the most flexible approach, the power of an opposition division to examine clarity objections against amended claims was unrestricted.

In deciding the questions referred to it, the Enlarged Board considered the wording of Art. 101(3) EPC, which - in relation to amended patents - refers to "the requirements of this Convention" and not only to the grounds of oppositions mentioned in Art. 100 EPC. The fact that the grounds available for opposition are deliberately limited by the EPC to the ones listed in Art. 100(a), (b) and (c) was also taken into account.

After a detailed analysis of the earlier case law and of the text of the EPC, the Enlarged Board came to the conclusion that under Art. 100 and 101(3) EPC, the power of Opposition Divisions (and of Appeal Boards) to examine amended claims under clarity is limited to cases where, and to the extent that, the clarity objections arise from the amendment(s).

Under this concept, e.g., when an opposed patent is amended by inclusion of the features of a dependent claim into the independent claim, a clarity issue, which already existed in the unamended dependent claim, cannot be examined by the Opposition Division.

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Headnote:

In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC.

The full text of the decision can be found here.