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, 2 April 2015

An eminent analysis of G 3/14 [Examination of clarity in opposition]

Last week the IPKat alerted readers to decision G 3/14 from the EPO’s Enlarged Board of Appeal, a decision which has restated the law regarding the examination of clarity in opposition proceedings. That post concentrated on the key findings, admittedly at the expense of a detailed analysis of the submissions made and the reasons given by the Enlarged Board in its 96 page decision.

The IPKat was therefore delighted to receive a comprehensive analysis of the decision from an impeccable authority, namely Daniel X. Thomas, former Director of DG1. Daniel is well-known to many readers as a trainer, lecturer and speaker on EPO opposition and appeals practice (among other topics), a role he fulfilled while he was working at the EPO and has continued to practise since his departure from that organisation. Daniel is happy to share his presentation analysing the decision, but the IPKat asks you first to note the following.

Copyright in the presentation remains with Daniel. Obviously it would be expected that readers of this blog, more than most audiences, will understand and respect this copyright and refrain from any redistribution or republication of the contents. Readers are welcome to download and print a copy of the presentation for their own use. If you're happy with those conditions, you can access the presentation in PDF format here.

Having read the presentation in advance, this Kat is very impressed with how Daniel has managed to encapsulate a very expansive decision and place it in context. For practitioners and students alike, it does an excellent job of explaining not only what the Enlarged Board decided, but also why (in the author’s view) they decided as they did, particularly as the President along with most of the amicus briefs, with the notable exception of FICPI, urged a different result, namely an expansive examination of amended claims in opposition.

The IPKat will leave the last word with Daniel, who wrote some good practical advice in his covering email:
I know from experience what difficulties one has when it comes to opposition and a claim is unclear. I would say as well it is in the interest of applicants/proprietors to have their own check on clarity and added-matter, and not simply close both eyes when they get the communication under R 71(3). The independent claim may be allowable as far as novelty and inventive step are concerned, but that is not the end of the matter.
Thanks again to Daniel for this analysis. If readers have any feedback on either the decision itself or Daniel's summary of it, please share below in the comments.


Anonymous said...

Am I the only one who sees this G decision as a lot of fuss about nothing? A case of "as you were"?

If the new claim is not clear it simply gives the wily opponent the opportunity to construe the meaning in a manner which hopefully reads onto a suitable prior art document.

Wrote H. Bosch

Anonymous said...

Even though it seems as it is just an affirmation of the standard practice, it is not a lot of fuss about nothing. Numerous parties such as epi, FICPI, CIPA, AIPLA and the President have written amicus curiae briefs over this matter, while defending different opinions. I believe this G decision is a fundamental decision on what opposition proceedings should be about.

said Iron Maid

David Brophy said...

It's true that it affirms conventional practice as in T 301/87, but additionally it disapproved T 472/88 which the Boards had followed for 25 years, where the concept of a lack of clarity "arising out of" an amendment was given a broad construction based on the OED definition, i.e. "originate, be born, result from, come into notice, present itself". This has had the effect over the years of drawing into clarity examination many granted claim features which the Enlarged Board's new test would exclude.

MaxDrei said...

What I like in the Decision is the brusque advice to all those Amici who endlessly werret on about the imperative of perfect clarity that they must "live with" less than perfect clarity.

As Daniel Thomas points out, as Bosch points out above, it is in the self-interest of Applicants and their advisers to police their own clarity, prior to issue.

Compare the USA, where patent litigators endlessly counsel drafters deliberately to obfuscate and be ambiguous, so that later, in litigation, they can play both sides against the middle. Do we in Europe want to go down that path? No thanks! Does G3/14 help us to steer clear of such a path? yes it does!

Nice unintended consequences, I think. What I mean is, by excluding Art 84 as a ground of attack on validity, we encourage draftetrs and prosecutors to minimise ambiguity, to police themselves, and thereby deliver clearer patents than we would otherwise have.

Sort of like pilots' licences. Take them away, the moment the pilot reports sick. Consequence: no pilot ever reports sick!

Anonymous said...

Consequence: the pilot who should have been able to have been helped with his sickness crashes a plane into a mountain killing what, 184 people?

MaxDrei, I don't know which is worse, your choice of metaphor, or your lack of understanding as to why your choices are perpetually off the rails.

Anonymous said...

Nice unintended consequences, I think. What I mean is, by excluding Art 84 as a ground of attack on validity, we encourage draftetrs and prosecutors to minimise ambiguity, to police themselves, and thereby deliver clearer patents than we would otherwise have.

Why would that be the consequence? It seems more likely that prosecutors are now encouraged to include as much vagueness in the (in)dependent claims as they can get past the examining division. That vagueness won't be a hinder in opposition proceedings and could possibly be of help in future infringement proceedings if the judge can be convinced of a particular meaning (a meaning still to be determined, in dependence on any prior art that might be cited and the properties of the allegedly infringing product).

But I don't think G 3/14 is really problematic because of this. It has always been of potential advantage to include vague features into claims. That is why there is Art. 84 in the first place: it is up to the EPO to ensure that granted patents are clear. (It seems to me that MaxDrei's reasoning would lead to the conclusion that scratching Art. 84 completely would somehow encourage applicants even more to draft clear claims.)

Since only a fraction of granted patents get opposed, the right time to enforce clarity is during the grant proceedings. G 3/14 might have the positive effect that it encourages the EPO to actually examine clarity of dependent claims. If the EBA had followed the president's opinion, the expected next step would be an amendment of the Guidelines making clear that examiners need not insist on clarity of the dependent claims. This is not an option now.

Ross Poldark's torso said...

I have had the pleasure of being across the table from DXT in both oppositions and examination proceedings. When he retired he showed me his extensive notes on the EPC and the body of case law that has built up around it - similar to these presentation slides. He really should make these available to those who would be willing to pay, which would be many from the profession, I'm sure.

MaxDrei said...

Anonymous writes:

"It has always been of potential advantage to include vague features into claims."

That may be. But now we have G3/14 and its observation that such vagueness can hurt you.

Remember Mario Franzosi's Angora cat? Puffed up, huge and threatening in Duesseldorf (where you need a wide claim to enjoin the infringer), tiny and pitiful in Munich, where the Federal Patents Court considers validity. Well, with G3/14 the biter is bit. The greater the egregious ambiguity, the more likely it will be, that your Baldrick-like devious and cunning dependent claim gets construed extra-widely in Munich too, when its patentability over the art is under review. And it's too late by then to clarify it, or amend it with text out of the description.

But perhaps I'm still seeing it wrong. Any more thoughts, anonymous?

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