Saturday, 6 March 2010

T 617/07 - Musings On Sufficiency

[…] the board concludes that no case of lack of sufficient disclosure of claim 37 has been made. [44]

[The opponent] has referred inter alia to decisions T 226/85, T 409/91 and T 694/92 to support his case. The facts underlying these three decisions have in common with the present case that the patent or the patent application disclosed only one or very few ways of carrying out the invention. The boards in decisions T 226/85, T 409/91 and T 694/92 held that the disclosure of the specific examples was not sufficient to enable the invention to be carried out as claimed. [45]

However, no principle can be deduced from these decisions that sufficiency of disclosure is always to be denied if there is only example of carrying out an invention.

Rather it is emphasised in all three decisions that:

(i) the skilled person should be able to realise without undue burden substantially any embodiment falling in the ambit of a claim on the basis of the disclosure and/or common general knowledge (T 226/85 [2-3]; T 409/91 [3.5, 2nd §]; T 694/92 [5, 3rd §], that

(ii) the objection of lack of sufficient disclosure presupposes that there are serious doubts, substantiated by verifiable facts (T 409/91 [3.5, 2nd §]; T 694/92 [5, 3rd §]) and finally that

(iii) it depends on the evidence available in each case whether or not a claimed invention can be considered as enabled on the basis of the disclosure of one worked example (T 226/85 [5-7]; T 409/91 [3.4-5]; T 694/92 [14-16]). [46]

The present board has balanced the facts of the present case with these considerations and has arrived at the conclusion that the requirement of sufficiency of disclosure was fulfilled with regard to claims 20 and 37 on the basis of the circumstances of the present case. [47]

Finally, [the opponent] has pointed to the legal principle referred to in decisions T 409/91 and T 694/92 that patent protection should correspond to the technical contribution disclosed in a patent. However, this is not a principle applied per se for judging whether or not the requirements of A 83 are fulfilled, as seems to be implied by [the opponent’s] submission. Rather, it is derivable from decisions T 409/91 and T 694/92 that the aim that patent protection be fair is achieved by proper application of the requirements of the EPC.

It is stated in decision T 409/91 [3.5]: “[...], the underlying purpose of the requirement of support by the description, insofar as its substantive aspect is concerned, and of the requirement of sufficient disclosure is the same, namely to ensure that the patent monopoly should be justified by the actual technical contribution to the art.”

Similarly, it is said in decision T 694/91 (sic) in point 3: “This need for fair and adequate protection has been emphasised in several decisions of the boards of appeal (see, for example, T 292/85 and T 301/87). The board deems it appropriate to consider the interrelation between the requirements of A 84, A 83 and A 56 in order to find a fair balance in the present case.”

Finally, this view is also confirmed in the more recent decision T 309/06 [14]: “All through the oral proceedings, the respondent repeatedly emphasized that claim 1 had a very wide scope which was not commensurate with the technical contribution provided. It is undoubtedly true that the breadth of the claim is very large. However, such case law as T 19/90 must be remembered at this point. In this earlier case, transgenic non-human mammals were claimed on the basis of having produced transgenic mice. The then competent board decided (T 19/90 [3.3]) that the mere fact that a claim is broad was not in itself a ground for considering the application as not fulfilling the requirements of sufficient disclosure under A 83. What is of importance is whether or not the skilled person could reproduce the invention without undue burden.” [48]

From the foregoing the present board concludes that its finding that the disclosure is sufficient with regard to the invention in claims 20 and 37 is consistent with the earlier jurisprudence of the boards of appeal of the EPO. [49]

To read the whole decision, click here.