Saturday, 8 May 2010

T 990/07 – Enough Said

In a recent post, I have cited a decision stating that there was no mandatory requirement for an example under the EPC and that the sufficiency of disclosure with regard to claimed subject-matter had to be judged on the basis of the whole disclosure in a patent and not only on that given by the examples. The present decision confirms this approach and provides some complementary considerations.

[3.1] R 27(1)(e) EPC 1973 requires the description to “describe in detail at least one way of carrying out the invention claimed using examples where appropriate and referring to the drawings, if any”. The only concrete examples disclosed in the present application are those of Figures 7, 8 and 11 which, however, do not embody the claimed subject-matter. Moreover, even if there is no doubt that these Figures are erroneous, their correction and the correction of the corresponding passages in the description is not permitted under R 139 (former R 88 EPC 1973). Such corrections would only have been allowable if it had been immediately evident what the correction should have been. Since, however, a multiplicity of distinct configurations describing single loops exist, this condition cannot be fulfilled, several different corrections being possible. Moreover, the selection of one specific configuration and the inclusion of the details necessary to define this configuration would necessarily contain fresh matter and thus contravene A 123(2).

In the absence of any other example actually embodying the claimed invention, the Board has to decide whether a request which fulfils the requirements of A 83 EPC 1973 should nevertheless be rejected on the basis of R 27(1)(e) EPC 1973.

[3.2] It has already been decided that where the application disclosed the claimed invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, it then necessarily disclosed “at least one way of carrying out the invention claimed”, as required by R 27(1)(e) EPC 1973, with the necessary details being derivable from the description including the prior art referred to therein (cf. T 389/87 [5.3-4]; T 561/96 [4.3]). Although the case underlying decision T 561/96 differs from the present situation in that the description and the drawings were not erroneous (cf. [4.2]), the Board also held in this decision that in cases where examples were not indispensable, their omission did not contravene R 27(1)(e) EPC 1973 which only required the insertion of such examples “where appropriate”.

The jurisprudence of the boards of appeal draws thus a clear distinction between the concepts of “way of carrying out the invention claimed” and “examples” referred to in R 27(1)(e) EPC 1973.

According to this jurisprudence, the detailed description of one way of carrying out the invention claimed has to be interpreted in the light of A 83. It constitutes a condition to be met by the description as a whole and is clearly mandatory. In contrast, the presence of examples would only be indispensable if the description would otherwise not be sufficient to meet this requirement.

Hence, the purpose of the “examples” evoked in R 27(1)(e) EPC 1973 appears primarily to be to complete an otherwise incomplete teaching.

In the case underlying decision T 134/82, relied upon by the ED in its refusal of the present application, the Board held that a misleading example or the absence of example was not appropriate and eventually refused the application. This decision was the consequence of the finding that crucial information for carrying out the invention was actually missing in the application.

The conclusion reached in decision T 134/82 is thus consistent with the case law referred to above in that it applied the same criterion, namely, whether sufficient information for reproducing the invention could have been gathered from the application as a whole.

The present case differs however from the situation underlying decision T 134/82 in that the examples of Figures 8 and 11, although erroneous, are not as such misleading since the skilled person would have undoubtedly been able to appreciate that they contained errors and would have realised how they should have been adapted to describe a (single) loop in the sense of independent claim 1.

The description of the connection structure contained in paragraphs [0035] to [0042] of the published application makes it clear that the antenna wiring portions are connected into a loop form by means of vias and intralayer wiring. The Board considers that this passage - although it relates to erroneous drawings - describes in detail one way of carrying out the invention in that the skilled reader is provided with the teaching necessary to enable the connection of the antenna wiring portions.

[3.3] Consequently, since the present description contains sufficiently detailed information to carry out the invention, as set forth above under section 2, the Board concludes that it is not necessary to include an example embodying the invention and that the requirements of Rule 27(1)(e) EPC 1973 are therefore met.

To read the whole decision, click here.

NB: This decision has already been reported on Le blog du droit européen des brevets.