From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Thursday, 26 March 2015

G 3/14: Clarity from the Enlarged Board

Readers who are currently involved in European Patent Office (EPO) opposition proceedings where the patent has been amended (i.e. about 70% of opposition cases) will no doubt be as excited as this Kat to learn that the Enlarged Board has issued its decision in G 3/14, a copy of which can be downloaded (PDF) from here.

The decision is a big one, and the IPKat is only starting to digest it. More detailed analysis may follow but here's the shortish version of a 96 page decision. The one sentence synopsis is that clarity examination in opposition must henceforth be of a much more limited scope than the more recent case law would suggest.

Alleged lack of clarity of the claims (Article 84 EPC) is excluded as a possible ground of opposition, but Article 101(3) says that the opposition division must examine whether the amended patent meets the requirements of the EPC in coming to its decision to maintain or revoke the patent. Whether this latter provision means that the opposition division or board of appeal must examine the amended claims for clarity is a recurring issue, and one which has given rise to two diverging lines of case law, which you can read about in detail in the decision itself, or in the referring decision T 373/12.

The Enlarged Board was asked to give an opinion on whether it was allowable to examine the clarity of amended claims in cases where elements of a dependent claim were added to an independent claim, and if so, to clarify how extensive that clarity examination ought to be.

Surprisingly perhaps, but in a move that practitioners, examiners and appeal boards must welcome for the increased certainty that it brings (even if the actual result is not to one's taste as an examiner or opponent), the Enlarged Board has used this referral as an opportunity to go far beyond the narrow question of combining dependent claim elements (or complete dependent claims) and has reviewed the entire subject of clarity in opposition proceedings de novo in a major judgment which rewrites the law on clarity examination post-grant.

The existing case law
The "conventional" jurisprudence (to use the Enlarged Board's terminology) is exemplified by T 301/87, which is the sort of landmark decision that most young children who yearn to be patent attorneys learnt while sitting on their grandfather's knee. According to this approach when claims are amended in opposition proceedings, objections of lack of clarity cannot be raised if the objections "do not arise out of" the amendments made.
 The "diverging" cases, again using the Board's terminology, are represented by T 1459/05 in its more moderate form and by T 459/09 in its more extreme form. T 1459/05 said that the clarity of a combination of dependent claim 4 with independent claim 1 was to be examined as an exception, due to the fact that the added feature was both unclear and yet was the only possible distinguishing feature over the prior art. In T459/09 the Board held that where claims were amended with a technically meaningful feature, this justified an "unrestricted exercise" of the examination power under Article 101(3).

As regards what it means for a lack of clarity to "arise out of" an amendment, this was initially interpreted (in T 301/87) as follows: a lack of clarity "arises" from an amendment when it did not exist before, so that the effect of the amendment is to give rise to a lack of clarity for the first time. However in T 472/88, the Board went further in a statement that has been followed in many decisions over the years. Here the Board looked to the Oxford Dictionary definition of "arise": "originate, be born, result from, come into notice, present itself". Later decisions both approved this broad definition and extended it to include "concealed" lack of clarity which then was "made visible" after the amendment. Although the referral did not ask the Enlarged Board to look at this aspect of clarity, the Enlarged Board did so.

Three major points from the decision

1. The answer to the referred questions

The Enlarged Board was given a series of questions, the first being:
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? 
Questions 2, 3 and 4 explored the implications of a yes or no answer to question 1. The Board noted that the issue was not the interpretation of G 9/91 (as the referring Board had put the question) but rather the proper interpretation of Article 101(3), and it considered that in answering question 1(a), all of the referred questions were also dealt with:
The questions referred to the Enlarged Board of Appeal are answered as follows: 
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.
2. Which approach is correct: T 301/87 (conventional) or T 1459/05 & T 459/09 (diverging)? 

The Board explicitly says [Reasons, 87]:
The Enlarged Board thus approves the conventional line of jurisprudence as exemplified by T 301/87 (section E(a), points 18 to 26, above), and disapproves [...] the line of "diverging"  jurisprudence (as exemplified in the cases set out in section E(c), points 30 to 43, above).
3. When does a lack of clarity "arise out of" an amendment?

Eagle eyed readers will see that the IPKat edited out some text in the preceding quotation. The missing part deserves its own spotlight:
The Enlarged Board thus approves the conventional line of jurisprudence [...] and disapproves the line of jurisprudence as exemplified by T 472/88 (explained in section E(b), points 27 to 29, above) [...]
T 472/88 was the case where "arises out of" was given a broad construction based on the OED definition, i.e. "originate, be born, result from, come into notice, present itself" . The Enlarged Board enlarged (sorry) on this particular point at [Reasons, 29], saying:
In the Enlarged Board's view, development of the jurisprudence of the Boards of Appeal in this way [interpreting "arise" to include each of the synonyms given in the dictionary definition]  is not legitimate. It is of course appropriate to use a dictionary when interpreting a statute to help elucidate its meaning, but statements in a decision of a court using ordinary words do not require further interpretation in this way: they are to be understood in their context. Given the facts of those cases (see points 18 and 20, above) the Enlarged Board does not consider that the Boards there intended these words to have the expanded meaning given to them in T 472/88 and the later cases which followed this approach. In any event, it is unclear to the Enlarged Board what the test developed on the basis of this construction actually amounts to or when precisely an amendment can be said to bring into notice, highlight or focus attention on a previously existing ambiguity (see further, point 80(k), below). This line of cases has not generally been regarded as belonging to a diverging line of cases (although it was identified as such in T 1577/10).
There's plenty more to digest in this decision, and the IPKat eagerly awaits readers' comments.


MaxDrei said...

Years ago, the EPO at The Hague held a conference on "Patent Quality". As we speak, the USPTO is having its own such Conference. For me, G3/14 raises the bar on "Quality" very significantly. Here's why.

In the context of amendment post-grant, consider the difference between i) an amendment involving no more than folding a dependent claim into Claim 1, and ii) injecting into Claim 1 something from the description. The former a doddle, the latter a nightmare.

Now go back to the time of drafting the patent application. How much time is it worth investing in drafting dependent claims?

Now think: all this time spent on the dependent claims. What does it do for the "Quality" of your drafting?

Which patent jurisdiction apart from the EPO puts such a high premium on getting the dependent claims right first time?

Interested BoA watcher said...

Can somebody explain to me how you and the writers from eplawblog, le blog du droit européen de brevets and so on have got the decision?
It has still not been officially publish on the EPO BoA website.

David Brophy said...

Dear Interested BoA watcher: the decision is on the application file here

It is sent to the parties and distributed to a number of people in the EPO and externally. For Enlarged Board decisions, word spreads fast. The IPKat credits his sources provided they are happy to be named, and in this case the kind reader who sent it to us had not confirmed that this would be appropriate by the time I posted the article.

Interested BoA watcher said...

Thanks for the clarifying reply. I was a bit astonished that it had spread so fast whereas myself, although trying to keep a close look at recent decisions, had not spotted it.

Anonymous said...

Decision G2/12 is also out:

P de Lange said...

The decisions in G2/12 (Tomatoes II) and G 2/13 (Broccoli II) are now also available in the online register. and

Anonymous said...

Reminds one of the three wise monkeys, e.g. we won't consider scope of claim in terms of effect, we weren't asked to look into this or that so we didn't, lets be really selective in what we look at in the travail, etc

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