Heli Pihlajamaa London, 20.05.2015Director Patent Law (5.2.1)

Clarity - Article 84 EPC

European Patent Office

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Clarity

Article 84 EPC

The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.

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Article 101(2) EPC Article 101(3) EPC

If the Opposition Division is of the opinion that at least one ground for opposition prejudices the maintenance of the European patent, it shall revoke the patent.

If the Opposition Division is of the opinion that, 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(b) do not meet the requirements of this Convention, it shall revoke the patent.

European Patent Office

G 3/14 – Clarity

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Examination Opposition Oppositionw/ amendment*

Invention Novelty Inventive Step Industrial Applicability Sufficiency of disclosure Added subject-matter Clarity

* amendments must be occasioned by a ground for opposition

European Patent Office

G 3/14 – Clarity

“[T]he claims of the patent may be examined for compliance with the requirements of Article 84 EPC

only when, and then only to the extent that the

amendment introduces non-compliance with Article

84 EPC.”

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“introducing” clarity problem= ≠

creating new clarity problem

bringing into light, highlighting,

making visible, etc.

European Patent Office

G 3/14 – Clarity

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amendment “introduces” lack of clarity

combination of subject-matter of previous independent claim with one (preferred) of several alternative embodiments previously contained in dependent claim

literal insertion of dependent claim into independent claim (=strike out original independent claim + write out previous dependent claim in full)

deletion of entire in/dependent claims narrowing of scope of claim by deletion of wording deletion of optional features from claim insertion into independent claim of feature from dependent claim disconnecting it from other features may

introduceinsertion into claim of feature from description

European Patent Office

Thank you for your attention!

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Heli PihlajamaaDirector Patent Law (5.2.1)European Patent Office, MunichTel: +49 (0) 89 2399 5210email: hpihlajamaa@epo.org