In a recent decision of the Technical Board of Appeal (found here), it was noted that different Boards of Appeal had taken different approaches to the issue of whether the clarity of amended claims can be considered by the Opposition Divisions and the Boards of Appeal. Consequently, the following questions have been referred to the Enlarged Board of Appeal:
i. Is the term “amendments” as used in decision G 9/91 of the Enlarged Board of Appeal 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 amended claims thus amended during the proceedings?
ii. 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?
iii. If the Enlarged Board of Appeal answers Question 1 in the negative, is then an examination of the clarity of independent claims thus amended always excluded?
iv. 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?
The Enlarged Board’s responses to these questions may be significant to parties in future post-grant opposition and appeal proceedings in the EPO, but those responses are unlikely to be issued for some time.