5.2. Scope of examination of amendments
5.2.2 Extent of power to examine amended claims for compliance with Article 84 EPC
The extent to which the opposition division or a board of appeal may examine clarity for the purpose of Art. 101(3) EPC was the subject of questions put to the Enlarged Board in referral G 3/14 (OJ 2015, A102). In the case underlying the referral (T 373/12 date: 2014-04-02, OJ 2014, A115) claim 1 of auxiliary request 1, submitted during opposition proceedings, consisted of a combination of the features of claim 1 as granted and of dependent claim 3 as granted.
As a preliminary point, the Enlarged Board identified the following main types of case: amendments which encompass a literal insertion of elements of dependent claims as granted into an independent claim (type A) – these include amendments in which a dependent claim contains within it alternative embodiments, one of which is then combined with its independent claim (Type A(i))– and amendments in which 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 A(ii)); furthermore, amendments which encompass a literal insertion of complete dependent claims as granted into an independent claim (Type B, this being the case with which the referring board was confronted).
The Enlarged Board first considered its previous jurisprudence, i.e. G 1/91 (OJ 1992, 253), G 9/91 (OJ 1993, 408) and G 10/91 (OJ 1993, 420). Citing the statement in point 19 of the Reasons in G 9/91 and G 10/91 that "[...] in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC", it noted that if the Enlarged Board had at the time considered that the opposition division and the boards of appeal were given wide powers to examine amended claims, it would have said so. Therefore, the term "amendments" had to be understood in the sense that the subject-matter to be examined must have some direct nexus with the amendment.
The Enlarged Board identified three main lines in the jurisprudence of the technical boards: the "conventional" approach, based on the test whether the amendment introduces any contravention of Art. 84 EPC, and the principle that Art. 101(3) EPC does not allow objections to be based upon Art. 84 EPC if they do not arise out of the amendments made (see T 301/87 and T 227/88, applied in many further cases, see e.g. T 381/02, T 1855/07, T 367/96 of 3 December 1997 date: 1997-12-03 and T 326/02). Secondly, there was a wider interpretation, according to which a lack of clarity could be examined if the amendment "highlights and focuses attention" on a previously existing ambiguity (T 472/88; see also T 681/00 and T 1484/07). The third line of jurisprudence was considered "diverging". According to T 1459/05 (see also T 1440/08 and T 656/07), clarity may be examined on a case-by-case basis as a matter of discretion when the added feature is the only feature that distinguishes the subject-matter of the claim from the prior art. T 459/09 was the most far-reaching of these diverging cases, stating that amended claims may generally be examined for clarity on a case-by-case basis irrespective of the kind of amendment.
On the interpretation of Art. 101(3) EPC, the Enlarged Board pointed out that the requirements of Art. 84 EPC are part of the "requirements of the Convention" for the purposes of Art. 101(3) EPC. There was, however, no indication that the object and purpose of Art. 101(3) EPC was to open up the patent to a complete re-examination, whether for clarity or the other requirements of the EPC. It was rather the amendment itself which was relevant, and its effect for the ground for opposition in question. Self-evidently, the amendment must not itself give rise to new objections.
As apparent from the travaux préparatoires to the EPC 1973, the legislator had deliberately chosen not to make Art. 84 EPC a ground for opposition. It would be unsatisfactory if an opponent could cause delays whenever an amendment was made, by raising all kinds of Art. 84 EPC objections. Furthermore, when the EPC 2000 was drafted, no suggestion was made for a change to reverse the effect of the then established case law, i.e. the conventional approach based on T 301/87. If the deletion of an independent claim with its dependent claims permitted examination of the remaining claims for lack of clarity, Art. 84 EPC would effectively become a ground for opposition in a large number of cases, which would be contrary to the legislator's intention. To conclude otherwise for a combination of claims which actually consists of striking out the original independent claim and then writing out the previously dependent claim in full, would be arbitrary and unjustified.
In conclusion, the Enlarged Board approved the conventional line of jurisprudence as exemplified by T 301/87, and answered the referred questions as follows:
"In considering whether, for the purposes of Art. 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 Art. 84 EPC only when, and then only to the extent that, the amendment introduces non-compliance with Art. 84 EPC."
Considering the different types of amendment distinguished in G 3/14, the board in T 1112/12 observed that a common theme underlying the Enlarged Board's ruling appeared to be that modifying a claim by merely deleting or excluding embodiments from the claimed subject-matter did not result in an amendment which was open to an objection under Art. 84 EPC (see also T 1977/13 and T 260/13). In T 2437/13 the granted claims already referred to figures and tables; it was thus not the amendments which introduced non-compliance with Art. 84 EPC in combination with R. 43(6) EPC. For further cases where the lack of clarity was already present in the claims as granted and the clarity objection therefore rejected, see e.g. T 266/15, T 488/13, T 1905/13, T 1287/14, T 2311/15, T 2321/15, T 2244/19, T 2391/18.
The following decisions are examples of cases in which the claim amendment in issue involved not a simple combination of granted claims or the mere deletion or exclusion of embodiments, but rather the addition of a feature from the description, with the result that the amended claim was open to clarity objections: T 565/11, T 2321/13, T 842/14, T 315/15, T 1976/19, T 2817/19.
In T 248/13 certain ambiguous terms were already contained in claim 15 as granted. However these terms defined the flavour of the final product, whereas the terms of claim 1 of auxiliary request 1 referred to an ingredient to be added. The board considered that by taking these terms out of the context in claim 15 as granted and placing them in the context of claim 1 of auxiliary request 1, a new ambiguity was introduced that was not present before. Therefore this amendment was objectionable under Art. 84 EPC.
In T 1221/19 the board referred to G 3/14 (OJ 2015, A102) and recalled that, in considering whether, for the purpose of Art. 101(3) EPC, a patent as amended meets the requirements of the 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. In line with this, the board considered that the description of the patent may also be examined for compliance with Art. 84 EPC only when, and then only to the extent that, the amendment introduced non-compliance with Art. 84 EPC. This was in accordance with both G 9/91 (OJ 1993, 408) and G 3/14. In the case in hand the reversion back to an erroneous reference as in the application as filed did not result in any lack of clarity or ambiguity of the disclosure in the paragraphs concerned.
In T 2391/19 the allegedly required amendment to the description did not relate to any amendment to the claims during opposition proceedings. Instead, it related to an alleged inconsistency that already existed in respect of a feature present in the granted claims. The board found that such an amendment to the description was not appropriate in opposition proceedings or opposition appeal proceedings. Even without the amendment to the description, there was no reason for the board (or the opposition division) to come to the conclusion that the requirements of the Convention (in particular the requirements of Art. 84 EPC) within the meaning of Art. 101(3)(a) EPC were not fulfilled in consideration of the conclusion of the Enlarged Board in G 3/14 set out above in this chapter.
- 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.