For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

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Friday, 1 August 2014

Pending referrals before the Enlarged Board

A couple of referrals to the EPO Enlarged Board of Appeals have slipped past the nose of the IPKat in recent months. Avid readers of the EPO Official Journal will have spotted them already, but the IPKat thought that they are worth highlighting, particularly as the time limit for comments to the Enlarged Board is still running for the three cases highlighted below.

G 3/14: Examination of clarity objections (comments invited by end of August 2014) 
The referred questions are as follows:

    Wim Van der Eijk,
    Chair, 
    Enlarged
    Board of Appeal
  1. 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?
  1. 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 
  2. in the unamended independent claim?
  1. If the Enlarged Board answers Question 1 in the negative, is then an examination of the clarity of independent claims thus amended always excluded?
  1. 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?
While this may look to be pretty dry stuff, it could have a deep impact on EPO opposition practice. Lack of clarity is not a ground for opposition at the EPO, but it can be brought up in two ways. Firstly, some kinds of clarity attacks can be shoehorned into the proceedings under the guise of insufficiency. Secondly (and relevant to this referral) the clarity of the claims can properly come under scrutiny when the proprietor has to amend.

There has been diverging case law on exactly what kinds of amendment will trigger a clarity examination. The traditional view (see e.g. T 301/87) was that there is no power to examine under Art. 84 EPC where the amendments creating the lack of clarity consist of a combination of claims as granted, the reasoning being that such amendments do not create any new lack of clarity, i.e. the amended claims are no less unclear than the granted claims which were immune from clarity attacks in opposition. However in T 1459/05 the board explicitly departed from this case law and found that the newly added feature was critical to assessing patentability, yet was “so unclear” that a proper analysis of novelty could not be carried out, justifying the raising of a clarity objection. (While the Board in T1459/05 described the circumstances as “exceptional”, it is perhaps not surprising how many opponents believe that they too are witnessing exceptional amendments justifying a full clarity examination.)

The Enlarged Board is being asked to lay down some concrete rules as to when clarity can and cannot be raised, especially as regards combining complete or partial claims as granted. Provided that it does not succumb to the temptation to answer with a finely judged lack of clarity of its own, the decision should help both patentees and opponents understand the limits of Article 84 in opposition.

G 1/14 and G 2/14: Inadmissible appeal or deemed not filed? (comments invited by end of September 2014)

The first of this pair of referrals is in the German language, the second is from an English language case. While the questions referred are not identical, the IPKat expects the decisions will issue simultaneously given the heavy overlap.

G 1/14 asks: If, after expiry of the time limit under Article 108 EPC, first sentence, a a notice of appeal is filed and the fee for appeal is paid, is the appeal inadmissible or is it deemed not to have been filed?

G 2/14 contemplates a slightly different situation, where only the fee was late paid:
Where a notice of appeal is filed but the appeal fee is paid after expiry of the time limit of Article 108 EPC, first sentence, is this appeal inadmissible or deemed not to have been filed?

The referrals are necessary due to conflicting case law. The leading early decision, J 21/80, was mistranslated from French into English. The original French text said the appeal in that case “est considéré comme non formé”, while this was rendered incorrectly in English as "The appeal against the Decision ... is inadmissible". Two lines of case law have grown up, with the "deemed not filed" school of thought being the more orthodox view.

Why does it matter? Well, at a narrow level, there is a question over whether or not the EPO should have to refund the appeal fee. The EPO must refund if the appeal was deemed never filed, but cannot do so if the appeal has come into being but is inadmissible. This also has a potential knock-on effect in the G 2/14 application, where two renewal fees paid since the commencement of the appeal might also have to be refunded if the appeal is deemed never to have been filed.

More broadly still, the referring Board in G 2/14 notes that:

The same wording as in Article 108 EPC can be found in Article 94 EPC (request for examination), Article 99 EPC (opposition) and Article 105a EPC (limitation), Article 112a (petition for review), and in Rule 22 EPC (registration of transfers), Rule 89 EPC (intervention), Rule 123 EPC (conservation of evidence), and Rule 136 EPC (re-establishment). Consequently, the interpretation of Article 108 EPC, second sentence, could have implications that go beyond the current case to be decided.

Finally, the referring Board in G 2/14 notes that although the preponderance of case law would favour the “deemed not filed” interpretation, it tends to prefer the minority of decisions following the “inadmissible” line.

Older referrals

For the record, the other referrals currently pending before the Enlarged Board, not including pending petitions for review (list here), are:


2 comments:

Anonymous said...

G3/14 has also been covered in a few posts over at IPcopy as well. Someone there was at the oral proceedings leading up to the referral



http://ipcopy.wordpress.com/2014/03/19/new-referral-to-epo-enlarged-board-of-appeal-follow-up/ and

http://ipcopy.wordpress.com/2014/04/07/new-eba-referral-the-questions-are-published/)

Anonymous said...

The questions are focused on the clarity of independent claims after amendment. But dependent claims may also get amended in opposition, and so the same issues would be relevant to them. It's rare but there have been cases where dependent claims were insufficient whilst the independent claims were not, e.g. I think where the dependent claims specified a sequence to be a 'mouse' sequence and that sequence had not yet been cloned and so it was impossible to know what that specific sequence was, though all the sequences of the independent claim could be made.

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