The Patent Lawyer: Jan Goering on the growing importance of clarity objections under Article 84 EPC
Why current EPO practice is reshaping the boundaries between examination and claim interpretation
Art. 84 EPC is the focus of a recent article by Jan Goering, German and European Patent Attorney and partner at BOEHMERT & BOEHMERT, published in The Patent Lawyer. In his article, “Inventing unclarity: the expanding reach of Article 84 EPC”, he examines the growing significance of clarity objections during European patent prosecution and questions whether current examination practice remains aligned with the provision’s original purpose.
Drawing on the legislative history of the European Patent Convention as well as international patent frameworks, Jan Goering argues that Article 84 EPC was originally intended to facilitate the examination process rather than serve as a substantive mechanism for restricting otherwise patentable claims. According to his analysis, the provision has gradually evolved into a frequently invoked tool that can have a significant impact on the wording and effective scope of patent claims.
The article also explores whether an increasing focus on linguistic precision risks diverting attention from what patent law is ultimately designed to protect: the technical contribution of an invention. Jan Goering discusses recent developments in EPO case law and places them in the broader context of the division of responsibilities between examining divisions and the courts. This development is closely linked to the debate surrounding decision G 1/24, which we discussed in our article “New Decision G 1/24 – Claim Interpretation Before the European Patent Office”.
Particular attention is given to the relationship between claim breadth and clarity. The central argument of the article is that broad claims are not necessarily unclear. Rather, the decisive question is whether the skilled person can understand the claimed technical teaching. Questions regarding the extent of patent protection should ultimately be addressed through the substantive requirements of patentability and through judicial claim interpretation, rather than through an expansive application of clarity objections during examination.