Contradictory rulings issued on clarity of claims

March 25 2013

Article 84 of the European Patent Convention (EPC) governs the clarity and conciseness of the claims in a European patent. It is well known that objections to the clarity of a claim cannot constitute a ground of opposition under article 100. However, clarity issues can be taken up in opposition proceedings by means of article 103.

Article 103(3) requires that a patent amended during opposition proceedings meet all requirements of the EPC. One of the requirements is that the claims are clear, which means that amended claims can be objected to under article 84.

Case law has developed a narrow interpretation of article 103(3). Consideration of the clarity of "the amendments" has been strictly limited to the examination of amended text itself, and amendments that arose from combinations of claims were not examined for clarity (the principle being that the claims as granted were sufficiently clear, otherwise they would not have been granted). A successful objection against the clarity of the claims could only be made in opposition if:

1. the purported lack of clarity arose from an amendment, and

2. the amendment was not simply a combination of claims, but was taken from the description or figures.

Certain decisions by the EPO Boards of Appeal have gone against this case law. For instance T 656/07 decided that an amendment that consisted solely of a combination of claims 1 and 2 was unclear. Arguably, this case was somewhat irregular, as claim 1 as amended referred to a "wafer according to claims 2 or 3", and cross-references in the claim were seen to cause a fundamental lack of clarity.

A more recent Board of Appeal decision, T549/09, allowed a clarity objection against a claim amendment that consisted purely of a combination of granted claims. Its justification was that the wording of article 103(3) qualified neither the nature nor the scope of "the amendments". The amendments were found to lack clarity.

As T549/09 seems to lie in direct contradiction to established case law, it might be logical to refer the issue to the Enlarged Board of Appeal. Interestingly, the appellant in T549/09 did request the case to be referred upwards, but this request was refused.