Oppositions are very useful centralized proceedings aimed at allowing third parties to obtain the revocation of any patent granted by the European Patent Office (EPO) and held to be invalid. Oppositions can be based on a number of grounds. These are: lack of patentability, lack of novelty, lack of inventive step, lack of industrial applicability, added matter, and insufficiency of disclosure. However, oppositions cannot be based on the lack of clarity of the granted claims.

This is an area of concern for many third parties, who often feel that their competitors are granted patents with claims that are not sufficiently clear to allow for the claims to be interpreted with a sufficient degree of certainty. It is therefore always something of a victory when clarity can be discussed during oppositions before the EPO.

In a recent decision of 2 April 2014, the EPO Board of Appeal referred a number of questions to the Enlarged Board of Appeal (the EPO’s authority of highest instance) regarding precisely the extent to which clarity must be assessed where the claims are amended in the course of opposition proceedings. The questions referred are:

“1. Is the term “amendments” … to be understood as encompassing a literal insertion of (a) elements of dependent claims as granted and/or (b) complete dependent claims as granted into an independent claim, so that opposition divisions and boards of appeal are required … always to examine the clarity of independent claims thus amended during the proceedings?
2. If the Enlarged Board answers Question 1 in the affirmative, is then an examination of the clarity of the independent claim in such cases limited to the inserted features, or may it extend to features already contained in the unamended independent claim?
3. If the Enlarged Board answers Question 1 in the negative, is then an examination of the clarity of independent claims thus amended always excluded?
4. If the Enlarged Board comes to the conclusion that an examination of the clarity of independent claims thus amended is neither always required nor always excluded, what then are the conditions to be applied in deciding whether an examination of clarity comes into question in a given case?”

Thus, the main issue is the extent to which, where the granted claims are amended in opposition by including a part of a dependent claim or an entire dependent claim, the resulting claims must be reviewed for compliance with the requirement of clarity since, prior to such amendment, they could not be reviewed accordingly in the course of the opposition.

The answers of the Enlarged Board of Appeal will surely influence pending and future opposition proceedings in all fields of technology. In fact, there is no obligation for a granted independent claim to be amended in opposition proceedings by including features of a dependent claim. Often the amendment is instead based on a feature taken from the description. However, it often happens that a granted dependent claim is used as a fall-back position, i.e. as a basis for amendment in the course of opposition proceedings. This is the most common reaction of the patentee immediately after requesting that the opposition be rejected and the patent be maintained as granted.

The EPO has invited interested third parties to file written statements, addressed to the Enlarged Board of Appeal. The statements will surely be very numerous and diverse, given the great interest the issue of clarity in opposition always attracts from both patent owners and the public.

pdf download PDF »