Summary
Although clarity is not a ground of opposition, the clarity of any amendment made during opposition proceedings should be examined by the opposition division. However, the decision of the Enlarged Board of Appeal in G 3/14 provided an exclusion for amendments that merely combine independent and dependent claims.
A recent decision (T 866/24) follows the decision of G 3/14, but questions whether all claims are in fact examined for clarity by the examining division before grant. If this is not the case, then the assumption that combining independent and dependent claims cannot result in a lack of clarity does not hold true.
The recent Enlarged Board of Appeal decision in G 1/24 noted the importance of the examining division carrying out a high-quality examination of whether a claim fulfils the clarity requirements. The pending Enlarged Board of Appeal case (G 1/25) will consider to what extent the description should be amended to remove inconsistencies that arise due to amendments of the claims. Presumably, this requirement will be considered in respect of both independent claims and dependent claims.
Background
A granted patent can be opposed on any one of a number of grounds that are set out in Article 100 EPC, but the list is not all encompassing. For example, a failure to meet the requirements for clarity in the claims (as required by Article 84 EPC) is not a ground of opposition.
However, clarity can be brought into question when a patent is amended during opposition proceedings. Namely, the EPO’s opposition divisions should ensure that amendments made during the opposition proceedings meet the clarity requirements of Article 84 EPC.
However, there is a further complication that was considered by the Enlarged Board of Appeal in G 3/14. The Enlarged Board considered certain types of amendments and whether they should be examined regarding clarity. One such type was the straightforward combination of an independent claim with one or more dependent claims.
In essence, the Enlarged Board found that no new subject matter was created by such an amendment and so should not be examined for clarity, saying: “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 keyword is “introduced”. The Enlarged Board noted that combining a dependent claim with an independent claim merely amounted to dropping the shorthand dependency formulation in favour of writing out the dependent claim in full. In turn, this did not introduce anything new that could also introduce non-compliance with Article 84 EPC.
Recent decision T 866/24
A recent EPO Board of Appeal case confirms the findings of G 3/14. In the recent decision of T 866/24 (an appeal from opposition), several auxiliary requests were filed with various different amendments of the claims. One amendment was a straightforward combination of an independent claim and a dependent claim. The Board noted that there could be no clarity examination in light of G 3/14.
Another amendment was a little less clear. During the oral proceedings, the opponent submitted that unclear features underlying amendments made to claim 1, which were based on the patent description, were “building up on corresponding unclear formulations taken from dependent claim 6 as granted.” The opponent argued that raising a clarity objection against unclear features stemming from granted dependent claims should be admissible under such circumstances. While the Board of Appeal sympathised, clarity was not considered to ensure G 3/14 was followed.
Importance of examining clarity the dependent claims raised
A point of interest arises from the Board questioning one of the assumptions behind why clarity is not always considered during opposition proceedings. It is assumed that the EPO’s examining division will have ensured that the claims met the requirements for clarity before granting the patent. Not considering the clarity of straightforward combinations of claims assumes that the clarity of the dependent claims was properly examined too. The Board raised doubts as to how valid an assumption this was.
In its decision, the Board said (underlining added),
“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.”
Implications for G 1/24 and G 1/25
The recent Enlarged Board of Appeal decision in G 1/24 considered to what extent the description should be consulted when interpreting the claims. The conclusion was the description should always be “consulted”. There has been some uncertainty as to what consulted means although subsequent case law seems to reinforce the primacy of the claims. T 866/24 refers to comments made in the decision of G 1/24 saying that the claims should be examined to ensure they are clear so as to remove the need to consult the description to remove any ambiguity. One assumes that the Board in T 866/24 were noting that this requirement should apply just as much to the dependent claims.
There is a further case pending before the Enlarged Board of Appeal (G 1/25). This case will consider to what extent the description should be amended to remove inconsistencies that arise due to amendments made to the claims. It will be interesting to see to what extent the dependent claims are discussed in this case. If the decision is that amendment should be required, then it seems logical that this should apply to both independent and dependent claims.
Takeaways
