Indefiniteness of the claims – This frequent objection at the EPO is unknown to the German Patent Court

 

Applicants regularly prosecuting patent applications at the European Patent Office (EPO) are often confronted with clarity (indefiniteness) objections against the claims. This may force the applicant to amend the claims even though the objection is sometimes debatable. It appears that, in recent years, EPO Examiners increasingly revert to clarity objections and focus less on substantive issues such as novelty and inventive step. A clarity objection may even become an inescapable trap for the applicant if there is arguably insufficient support in the application as filed to clarify the alleged unclear limitation in the claim. The basis for a clarity objection is Art. 84 EPC, which states that:

 

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

 

Lately, some Examiners at the German Patent Office (GPO) decided to jump on the EPO bandwagon and refused German patent applications based on an alleged indefiniteness of the claims. However, the German Patent Act has no equivalent to Art. 84 of the European Patent Convention. Some refusal decisions went to appeal. In the appeal proceedings, several Boards of the German Federal Patent Court concluded that, under German law, there is no legal basis for refusing a patent application for indefiniteness. The claims must be construed with the help of the description and the drawings. In case of doubts as to the meaning of a claim feature, the Examiner should adopt a pragmatic approach and choose a broad or non-limiting interpretation of the claim feature and reject the claim for lack of novelty or inventive step, and not for lack of clarity.

 

It remains to be seen whether this “common sense” approach of the German Appeal Boards will tempt more applicants to file nationally at the GPO instead of regionally at the EPO in order to avoid the EPO’s formalistic examination.

 

This is only a rough overview.

 

Publication date : September 2016

 

Contact : Fabian Lieb

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