T 0301/87 - Clarity in opposition proceedings (pre-G 3/14) - #15

Citation rank: 15
No. of citations: 191

T 301/87 is one of many decisions concerned with the question of whether and to what extent clarity objections can be examined in opposition. It represents one of two "diverging" schools of case law, which were considered by the Enlarged Board of Appeal when they looked at the same question in G 3/14. G 3/14 ultimately followed the approach taken by T 301/87, i.e., that clarity objections are to be examined only if the clarity objections arise out of the amendments made during opposition. (G 3/14 added an additional restriction to the examination of clarity objections in opposition, namely that the clarity objection can only be examined to the extent that the clarity objection arises from the amendment.)

Consideration was given in T 301/87 (and G 3/14) to the fact that, on the one hand, clarity is not included in the (exhaustive) list of grounds for opposition of Art. 100 EPC, but Art. 101(3) requires that the opposition division considers whether the amended patent "meets the requirements of [the EPC]" (with no reference to Art. 100 EPC).

T 301/87 appears still valid after publication of G 3/14, but G 3/14 of course carries more weight and is nowadays the decision to be cited. G 3/14 (rank #16 in the list of most-cited Board of Appeal decisions) has recently been summarised in this blog here.

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Headnote:

1. When amendments are made to a patent during an opposition, Article 102(3) EPC requires consideration as to whether the amendments introduce any contravention of any requirement of the Convention, including Article 84 EPC; Article 102(3) EPC does not allow objections to be based upon Article 84 EPC, if such objections do not arise out of the amendments made (further to T 227/88, dated 15 December 1988) (cf. Point 3.7 of the reasons)

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 The full text of the decision can be found here.