Approximately one year ago, we reported about decision T 459/09 from a Board of Appeal of the EPO. In that decision and contrary to a substantial body of previous case law, the Board decided that amendments to a granted European patent in an opposition procedure must be examined for clarity even if the amendment merely resulted from a literal incorporation of a granted dependent claim into a granted independent claim. Despite the factual discrepancy between different Board of Appeal decisions in this respect, the Board saw no necessity to refer any question regarding such matters to the Enlarged Board of Appeal to seek clarification.
Now the Enlarged Board of Appeal of the EPO will have to rule on this issue. In decision T 373/12 from 2 April 2014, the patent proprietor defended the patent against an opposition on the basis of an auxiliary request in which granted independent claim 1 was combined with granted dependent claim 3. The opponent relied inter alia on T 459/09 and argued lack of clarity of the combined subject matter. The Board of Appeal considered the raised clarity objection potentially relevant and therefore decided to make a referral to the Enlarged Board of Appeal. The referred questions are the following:
1. Is the term "amendments" as used in decision G 9/91 of the Enlarged Board of Appeal (see point 3.2.1) to be understood as encompassing a literal insertion of (a) elements of dependent claims as granted and/or (b) complete dependent claims as granted into an independent claim, so that opposition divisions and boards of appeal are required by Article 101(3) EPC always to examine the clarity of independent claims thus amended during the proceedings?
2. If the Enlarged Board of Appeal answers Question 1 in the affirmative, is then an examination of the clarity of the independent claim in such cases limited to the inserted features or may it extend to features already contained in the unamended independent claim?
3. If the Enlarged Board answers Question 1 in the negative, is then an examination of the clarity of independent claims thus amended always excluded?
4. If the Enlarged Board comes to the conclusion that an examination of the clarity of independent claims thus amended is neither always required nor always excluded, what then are the conditions to be applied in deciding whether an examination of clarity comes into question in a given case?
Hopefully, the answers from the Enlarged Board of Appeal to these questions will be unambiguous so that this issue is finally clarified.