EPO Board of Appeal “prefers” the claims proposed by the applicant

Following the significant increase in the excess claim fee several years ago, it has now become quite common to reduce the total number of claims in an EPO application by introducing preferred or optional features in claims.  This is often done when entering the EPO regional phase, for instance by combining a number of dependent claims into a single claim with preferred embodiments.

While reducing the number of excess claim fees incurred, this practice can lead to lack of clarity objections being raised during substantive examination.  Although such objections can usually be overcome by simply moving the preferred feature into a separate dependent claim, often this will lead to excess claim fees being incurred when the application grants.   Applicants can then face the choice of deleting otherwise allowable embodiments from the claims, or paying the punitive excess claim fees to retain the embodiments as separate dependent claims.

Earlier this year, an EPO Board of Appeal considered whether dependent claims containing preferred features such as successively narrower, preferred ranges should be allowed.  The decision T1882/12 was from the Examining Division’s refusal of claims under Article 84 and Rules 43(3) and 43(4) EPC.  The Examining Division held that the claims were otherwise novel and inventive, so the only issue that led to refusal was the alleged lack of clarity in the dependent claims containing the terms “preferably”, “particularly preferably”, “in particular” and the like. 

In the decision under appeal, the Examining Division held that Rule 43(3) EPC required separate, distinct embodiments to be listed in separate dependent claims.

The Board of Appeal disagreed and held that Rule 43(3) EPC merely allows for the formation of dependent claims; it does not require that separate embodiments must be claimed in separate dependent claims.  Instead, the relevant consideration is whether terms like “preferably”, “in particular” and the like lead to any confusion in the scope of the claim. 

The Board of Appeal further noted that the features following such terms should be considered entirely optional and non-limiting.  The inclusion of such features in the claims does not automatically lead to a lack of clarity.  Instead, it is necessary to consider each case and determine whether there is any ambiguity in the scope of the claims.  If no ambiguity arises, the inclusion of preferred features (within reasonable limits) does not contravene Article 84 EPC.

This decision will be welcomed by applicants who choose to include preferred features in claims to reduce the total number of claims and avoid incurring punitive excess claim fees.  

// Benjamin Hoffmann