The clarity of amended claims during post-grant proceedings
The legal authority for examining clarity at these post-grant stages is article 101(3) of the European Patent Convention (EPC), which states that the opposition division shall revoke the patent if “taking into consideration the amendments made by the proprietor of the European patent during the opposition proceedings, the patent and the invention to which it relates … do not meet the requirements of this convention”.
The examination guidelines says that a clarity objection “can be made only if the deficiency … is a consequence of the amendments made [during opposition or opposition appeal]”.
In G3/14 the enlarged board took a narrow view on the matter by stating that certain types of amendments to claims are in fact not amendments in the sense of article 101(3) EPC, which means that examination of clarity should not be raised just based on arguments regarding the clarity of claims that have been amended.
The enlarged board has classified amendments as the literal insertion of either a complete dependent claim into an independent claim (type B amendment) or elements of a dependent claim into an independent claim (type A amendment). The decision is not concerned with claim amendments based on elements from the description or drawings.
For type B amendments the enlarged board began by pointing out that a literal insertion of a completely dependent claim into an independent claim in fact corresponds to deleting the original independent claim and then writing out the previous dependent claim in full, and that the new independent claim is therefore not an amended claim.
The enlarged board therefore concluded that article 101(3) EPC does not provide legal authority to examine the “amended” claims with respect to clarity for type B amendments, and at the same time mentions that this situation is not optimal.
Type A amendments have been further broken down into two sub-types. Type A(i) amendments is where the dependent claim contains alternative embodiments, one or more of which is combined with the independent claim.
