1. Basic principles
1.4. Examination of the requirements under Article 84 EPC in opposition and opposition appeal proceedings
Article 84 EPC is not a ground for opposition. However, when substantive amendments are made to a patent during an opposition, consideration has to be given to whether the amendments introduce any contravention of any requirement of the EPC, including Art. 84 EPC (T 301/87, OJ 1990, 335). In G 3/14 the Enlarged Board analysed whether, and if so to what extent, the requirements of Art. 84 EPC may be examined in opposition and opposition appeal proceedings, in particular if the amended claim is a mere combination of a granted independent claim and granted dependent claims or elements thereof. The Enlarged Board approved T 301/87 and held that, for the purposes of Art. 101(3) EPC, the claims may be examined for compliance with Art. 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Art. 84 EPC. G 3/14 has been applied in e.g. T 1977/13, T 1905/13, T 565/11, T 248/13, T 1287/14, T 2311/15, T 2321/15 and T 1221/19 (clarity of adapted description). In G 2/19 (OJ 2020, A87), the Enlarged Board agreed with the findings in G 3/14 and stated that it would run counter to them if an extraordinary right to appeal were to be conferred with a view to having a board review whether granted claims were unclear. See also chapter IV.C.5.2.2 "Extent of power to examine amended claims for compliance with Article 84 EPC".
- T 1096/23
In T 1096/23 opponent 1 (appellant) raised among other things a clarity objection against auxiliary request 2. In this request, features of granted claim 6, which had originally been disclosed only as a dependent method claim, had been included in the independent apparatus claim 11. Opponent 1 submitted that clarity of these features had to be assessed, since G 3/14 did not apply when the category of the (dependent) claim was changed. As there was no disclosure of an apparatus which was configured to carry out these method steps, it was unclear how the method steps were implemented in the apparatus. Therefore, the subject-matter of independent apparatus claim 11 did not meet the requirements of Art. 84 EPC.
The board agreed with the patent proprietor (appellant) that according to G 3/14, when "complete dependent claims" have been added to the corresponding independent claim, the patent must not be examined for compliance with the requirements of Art. 84 EPC. But the board agreed with the reasoning of opponent 1 that this did not apply in the present case to the implementation of the method of the dependent method claim in the apparatus defined in claim 11. However, when a complete granted dependent claim is incorporated into an independent claim of another category (here: method step -> method step carried out by an apparatus), then only the amendments related to the change of category can be examined for clarity under G 3/14.
The board held that in the case of a sub-step of a method, which was (implicitly) executed in a computer program, it made no difference for the purposes of clarity whether this method step was part of a (computer-implemented) method or was implemented in computational means in an apparatus claim, so that no ambiguity could arise. Consequently, adding the features of the original dependent method claim 6 to the wording of apparatus claim 11 did not result in any ambiguity for the skilled person. Claim 11 of auxiliary request 2 met the requirements of Art. 84 EPC.
- T 0866/24
In T 866/24, during the oral proceedings before the board, the opponent (respondent) submitted that the unclear features underlying the amendments made to claim 1, which were based on the patent description, were building up on corresponding unclear formulations taken from dependent claim 6 as granted. Raising an objection under Art. 84 EPC against unclear features stemming from granted dependent claims should, in the opponent’s view, be admissible under such circumstances.
The board agreed, in principle, with the opponent's concerns. According to the board’s perception, there was a recent tendency to examine dependent claims less and less with respect to clarity in examination proceedings despite the fact that their full examination under Art. 84 EPC was not considered "unrealistic" in G 3/14, point 32 of the Reasons. Such a full examination was even expressly encouraged by the Enlarged Board in G 1/24, point 20 of the Reasons (i.e. highlighting "the importance of the examining division carrying out a high quality examination of whether a claim fulfils the clarity requirements of Article 84 EPC"). The board noted that the justification for such leniency may be found in the assumption that the protection conferred by a granted patent is defined only by the independent claims. Where dependent claims are subsequently added to an independent claim in the course of opposition proceedings, opponents are ultimately faced with unclear claim features which, as in the present case, were deemed to have been examined for clarity, although de facto they had not been. Nonetheless, they could not be objected to under Art. 84 EPC due to the conclusions of G 3/14.
The board observed that this result was unsatisfactory, as an independent claim with unclear features leaves much to the readers' imagination. It added that unclear features tend to elude a sensible comparison with the prior art. Furthermore, since opponents may not anticipate with certainty which claim construction will be adopted by the board or a court in infringement proceedings, they may feel obliged to put forward different lines of argumentation for all of the different potential interpretations. In the board’s view, categorically barring opponents in such cases from raising clarity objections under Art. 84 EPC causes undue complexities in the discussion on novelty and inventive step, to the detriment not only of opponents but also of the opposition divisions and the boards of appeal.