In February, we reported a referral to the Enlarged Board of Appeal (eBoA) for guidance
on whether amendments made during Opposition proceedings can be examined for clarity. The decision from this referral has now been published.
The issue of this referral concerns the fact that clarity is not a ground for Opposition. However, when amendments are made during Opposition, it is the responsibility of the Opposition Division to ensure that the amended Patent “meets the requirements of the EPC” and this includes clarity. Amendments that introduce subject matter from the description are always examined for clarity. However, there has been a divergence in case law on whether a combination of granted claims should also be examined for clarity by the Opposition Division.
Some of these decisions have held that combinations of claims that were present in the granted Patent are not susceptible to new clarity objections during Opposition. Others have held that these amendments should give rise to objections if they bring to light previously unnoticed clarity problems. This divergence in opinion has now been resolved by the eBoA.
In this decision, the Board ruled in favour of the former opinions. The claims of the Patent may be examined for clarity “only when, and then only to the extent that” the amendment made during Opposition introduces such clarity problems. In other words, an amendment to include a dependent claim in an independent claim cannot normally give rise to a clarity objection.
For Patent owners, this offers a useful safe harbour – amendments that combine dependent claims should not give rise to clarity issues. This also accentuates the importance of the dependent claims of a granted Patent. For Opponents, there are now fewer ways to attack a granted Patent.
Please contact Simon Kahn or your usual adviser for further information.