The Enlarged Board of Appeal (hereinafter, in brief, “EBA”) has been recently requested to issue a decision as to which extent an amendment made during EPO opposition proceedings can be challenged for lack of clarity. The technical question raised by the Board of Appeal (hereinafter, in brief, “BOA”) within case n. T 373/12 is specifically referred to amendments resulting from the combination of claims as already granted.
Such issue has been highly debated in the past.
On a general basis, EBA with decision n. G 9/91 of 31 March 1993 already took position on this matter by stating 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 EPC”.
However, this decision did not fully clarify the meaning of the term “amendments”. In particular, the EBA did not explain if the term “amendment” is to be understood as referring to any alteration (also literal) brought to a claim or only to modifications, which are substantial in nature.
Such uncertainty led to a number of BOA decision in which the meaning of the term “amendment” was discussed. Most of the decisions concluded that an examination of clarity is only required where the amendments cause a technically relevant amendment of the claim’s content (and not only literal insertions).
Nonetheless, the jurisprudence of the BOA is still divided as to whether the clarity of the amendment has to be examined also when an amendment results from a combination of already granted independent and dependent claims. Among others, BOA decision in case n. T 459/09 established that clarity of an amended claim should be examined even if the amendment only consists of a mere literal combination of claims of the patent as granted.
The EBA is now called to take a final position on this highly debated issue, thus ensuring a uniform application of the relevant discipline.