Enlarged Board provides clarity on clarity

Charlotte Jemmett | March 2015

The Enlarged Board of Appeal issues decision G3/14

A recent decision of the Enlarged Board of Appeal of the European Patent Office (EPO) has confirmed that when substantive amendments are made to a patent during opposition proceedings, only the clarity of the amendments themselves can be examined and/or objected to.

The decision also confirmed that amendment of an independent claim by insertion of complete dependent claims and/or an alternative embodiment of a dependent claim, does not give rise to a requirement to examine the clarity of the amended claim.

The decision approves early case law from the EPO on this issue, and disapproves the more recent line of “diverging” jurisprudence, in which the power to examine an amended claim for clarity had been held to be virtually unrestricted.

Clarification from the Enlarged Board on these points is important because while “lack of clarity” is not a ground of opposition within the meaning of the (EPC), the opposition division must examine whether an amended patent meets all the requirements of the EPC (including the requirement for the claims to be clear) when deciding whether to maintain or revoke the patent.

The decision confirms that when considering whether the amended patent meets the clarity requirements of the EPC, the opposition division may only examine the clarity of the amendment introduced into the claim.  In other words, amendment of a granted claim during opposition proceedings does not open the patent up to a compete re-examination for clarity.