The EPO’s Enlarged Board of Appeal has this week issued its eagerly awaited ruling on the subject of clarity of amendments in opposition proceedings. This has been a feature in many opposition hearings in recent years where opponents have raised clarity as an issue when a patentee amends its claims.
We will provide a full briefing note on this extensive decision in the coming days, however the overall substance of the ruling is that matters of clarity in claims which have or should have been properly considered during examination cannot be raised during opposition proceedings. That is to say, opposition cannot be used to reopen clarity. The decision gives various examples of types of amendments which may and may not have clarity raised as an issue in opposition.
Examples where clarity cannot be raised include the combination of a granted subclaim and a granted independent claim, and the combination of one of several alternatives from a granted subclaim with a granted independent claim.
Examples where clarity may be raised in opposition include the combination of a feature from the description and a granted independent claim and the combination of part of a granted subclaim with a granted independent claim.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.