[Editor's note] Like most countries and regions in the world, The rulings of the Court of Justice of the European Union have important guiding significance and predictive value for understanding the legal norms of the European Union. Esabaril (ELZABURU) At the beginning of each year, typical cases of the Court of Justice of the European Union in the previous year are summarized and published, And a brief review of each case, In order to help customers and partners to understand the EU intellectual property norms. Given the importance of Chinese customers and partners, We try to publish the Chinese version of typical cases on a weekly basis, It is convenient for Chinese partners to learn the latest information in a timely manner.

　　 [background]

　　2015 years 3 month 24 day, European Patent Office expanded Appeals Board (European Patent Office' s Enlarged Board ofAppeal) Ruling on whether clarity of claims can be examined in the European patent objection procedure.

　　 "European patent convention (European Patent Convention) " The first 100 The grounds on which an objection may be raised, Not including patent claims are unclear ( "European patent convention" The first 84 article) The situation of. but, If changes are made to the claims during the objection proceedings, Then according to "European patent convention" The first 101 (3) Provision of article, Dissent division of the European Commission (Opposition Division) The conformity of the amended patent shall be examined "European patent convention" request (Inclusive control 84 The content of the patent shall clearly specify the requirements) , And decide whether to approve or reject the amended patent.

　　As for the Council's Appeal Board (European Patent Office' s Board of Appeal) Whether it has the right to review the content of the patent amended during the objection or appellate process, There have been differences of opinion, Previous rulings have also been mixed.

　　In view of this, The Commission's Appeal Committee asked for an extension of the Commission's ruling, In the patent objection procedure, the right holder modifies the patent by adding part of the subordinate claim features to the independent claim, Whether the Appeal Board can conduct clarity review of the amended claim; If the answer to the first question is yes, What is the scope of the review?

　　 [conclusion]

　　The Board of Expanded Appeal stated in its decision in this case, In order to achieve "European patent convention" The first 101 (3) The purpose stated in the article, Only if the patent modification may cause the content of the patent to be unclear, Before a patent claim can be examined for compliance with Convention No 84 article (The claim is clear and unambiguous) Stipulation of, And the scope of the review should be limited to whether the amendments actually create a lack of clarity.

　　To sum up, The Office can only decide whether to reject the amendment in respect of the modified part of the patent objection procedure, The entire patent cannot be dismissed on the grounds that the modified claim is unclear.

　　 [comment]

　　This case is unequivocally upheld T 301/87 As determined by the ruling in Case No "convention" Legal interpretation (conventionaljurisprudence) , discard T 1459/05 Sum of cases T459/09 As asserted by the decision in Case No "extend" Legal interpretation (diverging jurisprudence) Broaden the scope of clarity review. From the ruling of this case, The examination of the clarity of the claim in the objection procedure will be limited to the comparison "extend" The legal interpretation is more strict.

　　This case has ruled that one of the practical implications of law is, The Office's objection procedure does not prohibit the dismissal of a patent on the grounds that the claims already granted are unclear, Because the content of the patent is unclear is not grounds for an objection. Therefore, If a patent is modified in the objection proceedings by deleting the entire claim or by limiting the scope of the claim already granted, As the revised claims do not add new content, Therefore, its patent clarity cannot be examined.

　　If you're in patent objection proceedings, By adding a dependent claim to the independent claim (Not all) The way features limit the former, Then only if the introduction of the new features may cause the modified claims to be unclear, Before it can be examined for clarity.

　　To examine whether the above conclusions will also affect the clarity of the European Authority in the licensing process, We will wait and see.

　　compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights