An eminent analysis of G 3/14 [Examination of clarity in opposition]
Last week the IPKat alerted readers to decision G 3/14 from the EPO’s Enlarged Board of Appeal, a decision which has restated the law regarding the examination of clarity in opposition proceedings. That post concentrated on the key findings, admittedly at the expense of a detailed analysis of the submissions made and the reasons given by the Enlarged Board in its 96 page decision.
The IPKat was therefore delighted to receive a comprehensive analysis of the decision from an impeccable authority, namely Daniel X. Thomas, former Director of DG1. Daniel is well-known to many readers as a trainer, lecturer and speaker on EPO opposition and appeals practice (among other topics), a role he fulfilled while he was working at the EPO and has continued to practise since his departure from that organisation. Daniel is happy to share his presentation analysing the decision, but the IPKat asks you first to note the following.
Copyright in the presentation remains with Daniel. Obviously it would be expected that readers of this blog, more than most audiences, will understand and respect this copyright and refrain from any redistribution or republication of the contents. Readers are welcome to download and print a copy of the presentation for their own use. If you're happy with those conditions, you can access the presentation in PDF format here.
Having read the presentation in advance, this Kat is very impressed with how Daniel has managed to encapsulate a very expansive decision and place it in context. For practitioners and students alike, it does an excellent job of explaining not only what the Enlarged Board decided, but also why (in the author’s view) they decided as they did, particularly as the President along with most of the amicus briefs, with the notable exception of FICPI, urged a different result, namely an expansive examination of amended claims in opposition.
The IPKat will leave the last word with Daniel, who wrote some good practical advice in his covering email:
I know from experience what difficulties one has when it comes to opposition and a claim is unclear. I would say as well it is in the interest of applicants/proprietors to have their own check on clarity and added-matter, and not simply close both eyes when they get the communication under R 71(3). The independent claim may be allowable as far as novelty and inventive step are concerned, but that is not the end of the matter.
Thanks again to Daniel for this analysis. If readers have any feedback on either the decision itself or Daniel's summary of it, please share below in the comments.