The questions referred to the Enlarged Board concerned the applicability of Article 84 EPC in post grant proceedings before the EPO. In particular, they concern whether, and the extent to which the Opposition Division or Technical Boards of Appeal are allowed to consider the clarity of amended claims.
The requirements of Article 84 EPC state:
“The claims shall define the matter for which protection is sought. They shall be clear and concise and supported by the description.”
The grounds for opposing the grant of a patent do not include a lack of clarity. However, because the claims may be amended in opposition proceedings, there has been a considerable amount of case law concerning the circumstances and the extent to which an objection of lack of compliance with Article 84 EPC may be examined by an Opposition Division or Technical Board of Appeal.
This referral came about because Article 101(3) EPC (which governs the examination of the opposition) states:
“If the Opposition Division is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during the opposition proceedings, the patent and the invention to which it relates
(a) meet the requirements of this Convention, it shall decide to maintain the patent as amended, provided that the conditions laid down in the Implementing Regulations are fulfilled;
(b) do not meet the requirements of this convention, it shall revoke the patent.“
Consequently, as compliance with Article 84 EPC is one of the requirements of the convention (although not a ground of opposition), the patent must be revoked if an amendment renders the claim unclear.
In the case leading to the present referral, the patentee argued that the combination of an existing claim with an independent claim did not constitute an ‘amendment’ and therefore Article 101(3)(b) did not apply. This was based on the argument that the combination of a dependent claim with an independent claim just results in a claim which already existed in the granted patent.
The extent of divergence of the case law has led to arguments at one end of the spectrum that whenever an amendment is made, the whole patent must be examined for compliance with all EPC requirements. This would evidently be rather worrying for patentees. At the other end of the spectrum it has been argued that an objection under Article 84 EPC can only be examined when an alleged lack of clarity has been introduced by an amendment, i.e., where it did not previously exist before the amendment. This is the approach that the majority of case law has followed.
In giving its answers to the referred questions, the Enlarged Board considered more than the specific amendment type dealt with in the case in hand. It set out the following situations and amendment types:
‘Type A(i)’: cases where a dependent claim contains within it alternative embodiments, one of which is then combined with its independent claim. (For example, granted claim 1, a product comprising X; granted claim 2, a product according to claim 1, comprising also a substantial amount of either Y or [preferably] Z; the amended claim then being to a product comprising X and also a substantial amount of Z).
‘Type A(ii)’: cases where a feature is introduced into an independent claim from a dependent claim, being a feature which was previously connected with other features of that dependent claim from which it is now disconnected.
‘Type B’: a literal insertion of a complete dependent claim as granted into an independent claim. (For example, Granted claim 1: a product comprising X; granted claim 2, a product according to claim 1 wherein the amount of X comprised in the product is substantial; amended claim 1: a product comprising a substantial amount of X).
Amendments consisting of deletion of wording from a granted claim, thereby narrowing its scope, but leaving intact a pre-existing lack of compliance with Article 84.
Deletion of optional features from a granted claim.
Questions Referred to the Enlarged Board of Appeal
The following questions were referred to the Enlarged Board of Appeal:
Is the term ‘amendments’ as used in decision G 9/91 of the Enlarged Board of Appeal (see point 3.2.1) 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 by Article 101(3) EPC always to examine the clarity of independent claims thus amended during the proceedings?
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?
If the Enlarged Board answers Question 1 in the negative, is then an examination of the clarity of independent claims thus amended always excluded?
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?
The Enlarged Board’s Answers
The Enlarged Board has concluded as follows:
“(85) Therefore the Enlarged Board’s answer to part (a) of the referred question 1 is: In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, 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.”
“(81) Therefore the Enlarged Board’s answer to part (b) of the referred question is, no. In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, 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.“
“(86) The above answers also deal with referred questions 2, 3, and 4.”
While providing the kind of general answer which avoids being drawn into specific facts, it is clear that the Enlarged Board of Appeal does not consider that an Opposition Division or Board of Appeal is obliged to re-open examination of the entire patent application when an amendment is made during opposition. The Enlarged Board thus approved the ‘conventional’ line of jurisprudence as expounded in decision T 301/87, and disapproved the line of jurisprudence as exemplified by decision T 472/88.
The Enlarged Board of Appeal’s conclusion also appears to be reasonably clear that the insertion of a whole dependent claim into an independent claim does not constitute an amendment which can be examined for clarity. The Enlarged Board’s reasoning indicates that such change to the claims is considered an ‘amendment’ for the purposes of Article 101(3) EPC, but that such an amendment would not introduce non-compliance with Article 84 EPC on the basis that “the amendment is in reality and substance not a new claim. It was already in the granted patent.”
It would therefore appear that, in the referring case, if the patentee were to combine an independent claim with a previously presented (unclear) dependent claim, the Opposition Division or Board of Appeal is not permitted to revoke the patent for lack of clarity.
However, where elements of dependent claims are used to amend an independent claim, the picture is not so clear. As the decision states, if the amendment introduces non-compliance with Article 84 EPC, then it may be examined. Whether this is the case or not will be fact-specific, and analysis will have to be carried out on a case-by-case basis.
To summarise, it seems that amendments of the ‘Type’ A(i), B, amendments consisting of deletion of wording from a granted claim, thereby narrowing its scope, but leaving intact a pre-existing lack of compliance with Article 84, and deletion of optional features from a granted claim will likely not be found objectionable under Article 84 EPC. However, type A(ii) amendments appear to be more likely to contravene the requirements of Article 84 EPC, subject to the above-mentioned considerations.
What is also interesting in the reasoning of the Enlarged Board is that it tacitly acknowledges that the examination of dependent claims by the EPO may not always be infallible (paragraph 49). Thus, the consequence of its decision will mean that, should such dependent claims be used as the source of an amendment of the independent claim, the public will just have to live with it (paragraph 55). A consequence of this is that examiners at the EPO may be asked to examine dependent claims more thoroughly.
However, the Enlarged Board also acknowledges that any lack of clarity of the claims may still be highly relevant in opposition proceedings in that it can influence the decisions on other grounds of opposition. For example, paragraph 35 of the Board’s reasoning specifically refers to the situation where the subject matter of the amended claim is so unclear that it cannot be distinguished over the prior art, hence it lacks novelty.
This decision limits the extent to which Article 84 EPC can be invoked against amended claims in post-grant proceedings before the EPO. Therefore, third parties who are aware of potentially problematic patents may be advised to consider alternative strategies to achieve limitation/revocation of a potential freedom to operate issue.
This may be achieved via two main routes:
Deal with the problem prior to grant. Monitor potentially problematic patents, and consider filing third party observations which raise the lack of compliance with Article 84 EPC. In order to get the attention of an examiner, reference to this decision may help to focus their minds!
Post grant strategies might include using other grounds of opposition to produce ‘squeeze’ arguments. As mentioned above, if a claim is unclear, it could be argued that the unclear feature cannot distinguish from the prior art. One could also argue that an unclear combination of features either lacks basis in the application or is not possible to put into effect, thereby contravening Article 123 and 83 EPC respectively.