Whether an amendment consisting in a simple combination of claims as granted can be objected to for lack of clarity is a controversial issue; there have been somewhat contradictory decisions on that matter. The present decision tries to shed some light.
*** Translation of the French original ***
[3.4] As far as the clarity of claim 1 is concerned, according to the established case law of the Boards of appeal (see e.g. T 381/02 [2]) the Board can only examine an objection based on A 84 in so far as the objection concerns amendments with respect to the patent as granted. In this context a claim is not considered to have been “amended” when it results from a granted claim that is completed using features of other granted claims without exceeding the scope of the granted version resulting from the interdependence of the granted claims. Accordingly, claim 1 of the present request cannot be considered to have been amended because it corresponds to a combination of claims 1 to 4 and 7 as granted and its subject-matter corresponds exactly to the subject-matter of claim 7 as granted. As a consequence, the Board cannot examine the clarity of the claims.
[3.5] The [opponents] have pointed out that decisions T 1459/05 and T 656/07 did not follow the previous development of the case law and, therefore, required clarity to be examined in the present case.
[3.6] The Board notes that in case T 656/07 the lack of clarity resulted at least in part from amendments made after the grant of the patent. The Board had considered that it was possible to raise an objection of lack of clarity in the opposition proceedings because it resulted from amendments that had been made in the course of these proceedings, although the contested feature as such had already been present in the claims as granted, but in a different combination (point [2.2] of the decision). Therefore, this decision is in line with the established case law.
[3.7] In case T 1459/05 [4.3.5] the Board had found it necessary to exercise its discretionary power and to leave aside, exceptionally, the general practice that prohibits examination of compliance with A 84 when the amendments consist in combination of claims as granted. In particular, it was exceptionally possible to examine the clarity of a claim in view of a particular feature contained in one of the combined claims if the amendment made the assessment of the text of the patent as amended – e.g. in respect of novelty and inventive step under A 100(a) – more difficult or even impossible (impracticable).
However, the present Board notes that it is not the “general practice” that prohibits an examination of compliance with A 84 but that [it is because] A 84 does not constitute a ground for opposition within the meaning of A 100 [that such examination is not possible].
Moreover, the present situation is not such that it would not be possible to examine novelty or inventive step […]. Therefore, it is not necessary to analyse this decision in further detail.
[3.8] Consequently, it is not within the powers of the Board to verify whether the requirements of clarity enshrined in A 84 are complied with in the present case.
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