1. Referral G 3/14 ("Examination of clarity objections") is pending before the Enlarged Board of Appeal. The questions referred to the Enlarged Board of Appeal seek, in particular, to clarify whether the term "amendments" as used in decision G 9/91 of the Enlarged Board of Appeal is to be understood as encompassing a literal insertion of elements of dependent claims as granted and/or of complete dependent claims as granted into an independent claim, so that opposition divisions are required by Article 101(3) EPC to examine the clarity of independent claims thus amended during the proceedings. All four questions referred to the Enlarged Board of Appeal can be found in decision T 373/12. [ 1 ]
2. The Enlarged Board of Appeal has invited the public to comment on the referral, with the period for amicus curiae submissions expiring at the end of August. [ 2 ]
3. The President of the European Patent Office has decided that, having regard to the potential impact of the referral, all proceedings before the EPO opposition divisions where the decision depends entirely on the outcome of the Enlarged Board of Appeal's decision will be stayed ex officio until the Enlarged Board of Appeal issues its decision.
4. This concerns cases in which amendments are made during opposition proceedings and in which these amendments consist of a literal insertion of elements of dependent claims as granted and/or of complete dependent claims as granted into an independent claim, provided the amendments raise a clarity issue and the opposition division’s decision depends entirely on the outcome of the Enlarged Board of Appeal's decision.
5. If proceedings are stayed, the responsible opposition division will inform the parties thereof. At the same time, communications setting time limits for the parties to react will be withdrawn by the opposition division, and no further communications to this effect will be despatched. Once the Enlarged Board of Appeal has given its decision, a further communication will be issued concerning the resumption of proceedings.
6. The present notice is immediately applicable but limited to those cases affected by referral G 3/14. It supersedes, for this specific referral, the general practice of the departments of the first instance as laid down in the Guidelines for Examination, Part E-VI, 3, according to which proceedings in case of referrals pending before the Enlarged Board of Appeal are stayed only at the explicit request of a party to the proceedings.
[ 1 ] To be published in the OJ EPO.
[ 2 ] Communication from the Enlarged Board of Appeal concerning case G 3/14, OJ EPO 2014, A66.
Date retrieved: 19 May 2021