Claims under the European Patent Convention

Claims under the European Patent Convention
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Legal requirements
applicable to
European patent
applications and patents
European Patent Convention (EPC)[1] defines the function of the claims under the European Patent Convention, the function being to define the matter, i.e. the invention, for which patent protection is sought. This legal provision also imposes that the claims must be clear, concise as well as supported by the description of the European patent application or patent.[1] The form and content of the claims are defined in Article 84, and supplemented by the Rule 43 EPC.[2][3]

The wording of Article 84 is as follows:

“ The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.[1] ”

Contents

Rationale

Article 84 EPC in combination with Rule 43(1) EPC require that the claims must be clear (i.e., for instance the claim wording cannot be obscure) and must define the matter for which protection is sought in terms of the technical features of the invention. The rationale behind this requirement is to ensure that the public is not left in any doubt as to which subject-matter is covered by a particular patent and which is not.[4] The clarity requirement therefore plays an important role in providing legal certainty for third parties to determine whether they are infringing or could infringe a patent or not, so as in turn to be able to make the most informed economic decisions as possible (such as taking a license, designing around, refraining from entering a market, etc.).

Clarity

According to the established case law of the EPO boards of appeal, the claims must be clear "in themselves when being read with the normal skills, but not including any knowledge derived from the description of the patent application ...".[5] In other words, the wording of a claim must be clear in itself.

Implementing regulations

Rule 43(1) EPC

Rule 43(1) EPC notably imposes that an independent claim should be drafted in a two-part form, including a preamble and a characterizing part. The preamble includes all the features of the claim that in combination are known in a prior art document. The characterizing part includes the other features, i.e., those not known in the prior art document used to draft the claim in a two-part form. The two-part form required by Rule 43(1) should be complied with "wherever appropriate". This manner of claiming an invention is also prescribed, in a similar manner, in the Patent Cooperation Treaty, namely in Rule 6.3(b) PCT.

Rule 43(2) EPC

Pursuant to Rule 43(2) EPC, a plurality of independent claims in the same claim category are only allowable in exceptional circumstances, listed in Rule 43(2)(a), (b) and (c). Decision T 263/05 of the Boards of Appeal of the EPO held that Rule 43(2) was not applicable in opposition proceedings.[6]

New Rule 62a EPC, which entered into force on April 1, 2010,[7] provides the opportunity for the EPO to invite the applicant to comply with Rule 43(2) before the search is carried out. This was not foreseen under the former regulations.[8] Under the new rules, if the claims as filed in a European patent application contain a plurality of independent claims in the same claim category and if the EPO considers in that case that the claims therefore do not comply with Rule 43(2) EPC, the EPO may "invite the applicant to indicate, within a period of two months, the claims complying with Rule 43, paragraph 2, on the basis of which the search is to be carried out." "If the applicant fails to provide such an indication in due time, the search shall be carried out on the basis of the first claim in each category".[9] A Rule 62a EPC objection may however be contested by the applicant in its reply to the search division or, later, before the examining division.[10] If the search division finds that its initial objection was not justified in view of the applicant's arguments, the search will then be carried out on an unlimited basis.[10] The examining division may also override the assessment of the search division.[10] Otherwise, the claims will have to be restricted, during examination, to the subject-matter searched.[11]

This amendment to the Implementing Regulations of the EPC is part of the so-called "raising the bar" initiative, with the claimed aim "to improve the quality of incoming patent applications and streamline the grant procedure".[12]

Applicability in opposition and revocation proceedings

Article 84 is neither a ground of opposition under Article 100 EPC nor a ground for revocation under Article 138(1) EPC.[13] Article 84 may however play a role in opposition proceedings if the patent proprietor makes amendments to the claims during the opposition proceedings.[14]

References and notes

  1. ^ a b c Article 84 EPC
  2. ^ Previously Rule 29 EPC 1973.
  3. ^ Nicholas Fox, A Guide to the EPC 2000, CIPA, page 74, ISBN 0903932261.
  4. ^ See for instance Decision of 3 December 2008, Case Number: T 0528/06, Reasons 1.
  5. ^ Decision T 1819/07 of 15 March 2011, Reasons 3.4.1 (citing decision T 0908/04 of 15 February 2006, point 3.5 of the reasons); "According to T 908/04, to comply with Art. 84 EPC 1973, claims must be clear in themselves when being read with normal skills, but not including any knowledge derived from the description of the patent application (following T 988/02; see also T 1898/06)" in Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (sixth edition 2010), ii.b.1.1.2 ; "In decision T 454/89 the board shared this view and explained that Art. 84 EPC 1973 requires that claims must be clear in themselves when read using normal skills, including knowledge of the prior art but not any knowledge derived from the description contained in the patent application or the amended patent" and "The clarity stipulation under Art. 84 EPC 1973 concerned only the claims, and therefore - according to the established case law of the EPO boards of appeal - required that they be clear in themselves, without there being any need for the skilled person to refer to the description" in Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (sixth edition 2010), ii.b.5.3.5
  6. ^ EPO boards of appeal decision T 263/05 dated June 28, 2007, Headnote II.1
  7. ^ Decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the European Patent Convention (CA/D 3/09), Article 2(1).
  8. ^ EPO web site, Notice from the European Patent Office dated 15 October 2009 concerning amendments to the Implementing Regulations to the European Patent Convention (EPC), 15 October 2009, point 2.1.
  9. ^ Decision of the Admin. Council, CA/D 3/09, Article 1.1.
  10. ^ a b c EPO web site, Notice from the EPO dated 15 October 2009 concerning amendments to the Implementing Regulations to the EPC, 15 October 2009, point 2.2.
  11. ^ New rule 62a(2) EPC. See Decision of the Admin. Council, CA/D 3/09, Article 1.1.
  12. ^ EPO web site, Notice from the EPO dated 15 October 2009 concerning amendments to the Implementing Regulations to the EPC, 15 October 2009, 1. Introduction.
  13. ^ See for instance: Decision T 0075/09 of the Technical Board of Appeal 3.3.03 of 13 September 2011, Reasons for the Decision 2.8, 2nd and 3rd paragraphs:
    "... a deficiency concerning the requirements of Article 84 EPC is neither a ground for opposition before the EPO under Article 100 EPC nor a ground for revocation under Article 138(1) EPC. Consequently, such a deficiency cannot be dealt with, let alone remedied in either proceedings.
    Reference can be made in this respect to established jurisdiction, namely to the Decision of the Enlarged Board of Appeal G 9/91, (OJ EPO 1993, 408, No. 19 of the reasons) and eg Decisions T 301/87 (OJ EPO 1990, 335, No. 3.8 of the reasons) and T 690/00 of 20 February 2002 (No. 4.1 of the reasons; not published in OJ EPO, cf. also Chapter VII.D.4.2 in the Case Law of the Boards of Appeal of the EPO, 6th edition, 2010)."
  14. ^ David Rogers, Lack of clarity as a ground in opposition proceedings, Journal of Intellectual Property Law & Practice, 2007, Vol. 2, No. 8, p. 502.

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