The Enlarged Board of Appeal of the European Patent Office has been asked for clarification on the power of the Opposition Division to examine amendments made during opposition on the basis of clarity. The clarity of granted claims is not a valid ground of opposition, but amendments made during opposition can be examined for clarity in certain cases. The established practice of the EPO was not to examine amendments for clarity, when these amendments simply introduce the features of a dependent claim into an independent claim. This is because the resulting combination of features was claimed in the granted patent.
The referral to the Enlarged Board of Appeal (from case T 0373/12) follows recent decisions from the EPO Boards of Appeal (T 0459/09 and T 0409/10) that seem to have contradicted the EPO’s established practice. These decisions argue that any amendment which introduces technical features into the claims is viewed as substantive and therefore can be examined on the grounds of clarity. The referral should clarify whether the established practice will remain or change.
Regardless of the Enlarged Board of Appeal’s answer, clarity will still not be a valid ground of opposition. However, the answer may affect how both sides choose to address amendments made during opposition proceedings. For more information, speak to your usual Boult Wade Tennant adviser.