Summary of Facts
During the appeal proceedings the patent proprietor filed an auxiliary request which consisted of a combination of granted claim 1 and granted dependent claim 3. Granted dependent claim 3 contained a lack of clarity under Article 84 EPC, which was overlooked by the Examining Division and which was now introduced into claim 1 by the combination of these claims.
The Legal Framework
The legal framework within which clarity is to be examined in opposition and opposition appeal proceedings is determined on the one hand by the fact that lack of clarity is not a ground for opposition, and on the other hand that a patent must be revoked which has been amended in such a way that a lack of clarity arises by this amendment.
The issue decided by the Enlarged Board of Appeal concerns the understanding of the term “amendment” in cases where the alleged lack of clarity already existed in the granted claims and arises by a literal insertion of complete dependent claims as granted into an granted independent claim.
Some of the Conclusions of the Enlarged Board
The legislator has rejected any suggestion that the requirements of Art. 84 EPC should be considered as a ground for opposition, whether concerning lack of support or clarity (“They, the claims, shall be clear and concise and be supported by the description”).
The amendment by a combination of claims in reality consists of striking out the original independent claim and then writing out the previous dependent claim in full. The so amended claim is in reality and substance not a new claim.
If the patent is defended as granted, the fact that new prior art is cited which demonstrates that a granted claim is unclear has to be lived with.
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.
This means that a claim construed by the combination of granted claims may not be examined for lack of clarity and lack of support by the description under Art. 84 EPC during opposition and opposition appeal proceedings. However, it has never been doubted that where the effect of an amendment is to introduce an alleged lack of clarity which did not previously exist, the amended claim may be examined for compliance with Art. 84 EPC.