Disclosure of the invention under the European Patent Convention

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Article 83 of the European Patent Convention (EPC) [1] relates to the disclosure of the invention under the European Patent Convention. This legal provision prescribes that a European patent application must disclose the invention (which is the subject of the European patent application) in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

Contents

Basic principles

To comply with Article 83 EPC, a European patent application must contain sufficient information to allow a person skilled in the art, using his common general knowledge and the information provided in the application, to perceive the technical teaching inherent in the claimed invention and to put it into effect accordingly. [2] In other words, the disclosure of the invention must be reproducible without undue burden, [3] and this must be true over the whole scope of the claim. [4] [5] Further, even if an invention "requires a certain amount of experimentation by the skilled person to carry it out", the invention may still be considered as sufficiently disclosed "as long as this experimentation is not an undue burden on the skilled person". [6]

In the context of assessing sufficiency of disclosure, the EPO considers that, although a claim must be construed with a mind willing to understand, this does not require that a technically broad but clear term be interpreted more narrowly in the light of a limiting feature mentioned only in the description. [7]

The requirement of sufficiency of disclosure must be complied with as from the date of filing because a deficiency in a European patent application as filed, consisting in an insufficient identification of the subject-matter claimed, cannot subsequently be cured without offending against Article 123(2) EPC, which provides that the subject-matter content of a European patent application as filed may not be extended. [8]

An insufficiently clear and complete disclosure of the invention is a ground of opposition, [9] and revocation. [10]

Violation of the generally accepted laws of physics

Although the European Patent Convention does not exclude the patenting of "revolutionary" inventions, [11]

the provisions of Article 83 EPC require that the European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by the skilled person and that, in particular "if the invention seems, at least at first, to offend against the generally accepted laws of physics and established theories, the disclosure should be detailed enough to prove to a skilled person conversant with mainstream science and technology that the invention is indeed feasible (i.e. susceptible of industrial application). This implies, inter alia, the provision of all the data which the skilled person would need to carry out the claimed invention, since such a person, not being able to derive such data from any generally accepted theory, cannot be expected to implement the teaching of the invention just by trial and error". [11]

Burden of proof in opposition

The burden of proof generally lies upon an opponent to establish insufficiency of disclosure. [12] [13] [14] However, "when the patent does not give any information of how a feature of the invention can be put into practice" and if the opponent plausibly argues that "common general knowledge would not enable the skilled person to put this feature into practice", the burden of proof can be shifted to the patentee to show that "common general knowledge would indeed enable the skilled person to carry out the invention." [15]

Relationship between Articles 83 and 84 EPC

Depending upon the circumstances, an ambiguity in the claims (i.e. a lack of clarity under Article 84 EPC) may very well lead to an insufficiency objection. [16] As held in decision T 608/07 of 27 April 2009 (in opposition appeal proceedings),

"[it] should be born in mind that [such an] ambiguity also relates to the scope of the claims, ie Article 84 EPC. Since, however, Article 84 EPC is in itself not a ground of opposition, care has to be taken that an insufficiency objection arising out of an ambiguity is not merely a hidden objection under Article 84 EPC. (...) [For] an insufficiency arising out of ambiguity it is not enough to show that an ambiguity exists, eg at the edges of the claims. It will normally be necessary to show that the ambiguity deprives the person skilled in the art of the promise of the invention. It goes without saying that this delicate balance between Article 83 and 84 EPC has to be assessed on the merits of each individual case." [16]

That a lack of clarity in the claims may, in some cases, result in an insufficient disclosure of the invention has been also pointed out by Board 3.2.05 in decision T 1811/13 of 8 November 2016. The Board explained however that:

"(...) in such a case it is not sufficient to establish that a claim lacks clarity, but it is necessary to establish that the application or patent, as the case may be, does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. In other words, it is not sufficient to establish a lack of clarity of the claims for establishing lack of compliance with Article 83 EPC (...); it is necessary to show that the lack of clarity affects the patent as a whole (i.e. not only the claims) and that it is such that the skilled person - who can avail himself of the description and his common general knowledge - is hindered from carrying out the invention (...)." [17]

Implementing regulations, especially Rule 42 EPC

Rule 42 EPC specifies the content of the description of a European patent application and constitutes an implementing rule of Article 83 EPC. Rule 42(1)(e) EPC (previously Rule 27(1)(e) EPC 1973) notably specifies that "[the] description shall ... describe in detail at least one way of carrying out the invention claimed, using examples where appropriate and referring to the drawings, if any." In that respect,

"[the] jurisprudence of the boards of appeal draws a clear distinction between the concepts of "way of carrying out the invention claimed" and "examples" referred to in [Rule 42(1)(e) EPC]. ... the detailed description of one way of carrying out the invention claimed has to be interpreted in the light of Article 83 EPC. 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 [Rule 42(1)(e) EPC] appears primarily to be to complete an otherwise incomplete teaching." [18]

Related Research Articles

The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention (EPC) is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973. The subject also includes the question of whether European patents granted by the European Patent Office (EPO) in these fields (sometimes called "software patents") are regarded as valid by national courts.

<span class="mw-page-title-main">European Patent Convention</span> International patent treaty

The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally enforceable, nationally revocable patents, subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.

Prior art is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria for patentability. In most systems of patent law, prior art is generally defined as anything that is made available, or disclosed, to the public that might be relevant to a patent's claim before the effective filing date of a patent application for an invention. However, notable differences exist in how prior art is specifically defined under different national, regional, and international patent systems.

A person having ordinary skill in the art, a person of (ordinary) skill in the art, a person skilled in the art, a skilled addressee or simply a skilled person is a legal fiction found in many patent laws throughout the world. This hypothetical person is considered to have the normal skills and knowledge in a particular technical field, without being a genius. The person mainly serves as a reference for determining, or at least evaluating, whether an invention is non-obvious or not, or involves an inventive step or not. If it would have been obvious for this fictional person to come up with the invention while starting from the prior art, then the particular invention is considered not patentable.

The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

The inventive step and non-obviousness reflect a general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive—i.e., non-obvious—in order to be patented. In other words, "[the] nonobviousness principle asks whether the invention is an adequate distance beyond or above the state of the art".

In certain jurisdictions' patent law, industrial applicability or industrial application is a patentability requirement according to which a patent can only be granted for an invention which is susceptible of industrial application, i.e. for an invention which can be made or used in some kind of industry. In this context, the concept of "industry" is far-reaching: it includes agriculture, for instance. An example of invention which would not be susceptible of industrial application is "a method of contraception [...] to be applied in the private and personal sphere of a human being".

Sufficiency of disclosure or enablement is a patent law requirement that a patent application disclose a claimed invention in sufficient detail so that the person skilled in the art could carry out that claimed invention. The requirement is fundamental to patent law: a monopoly is granted for a given period of time in exchange for a disclosure to the public how to make or practice the invention.

G 1/03 and G 2/03 are two decisions of the Enlarged Board of Appeal of the European Patent Office (EPO), which were both issued on April 8, 2004.

This is a list of legal terms relating to patents. A patent is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.

T 258/03, also known as Auction Method/Hitachi, is a decision of a Technical Board of Appeal of the European Patent Office (EPO), issued on April 21, 2004. It is a landmark decision for interpreting Article 52(1) and (2) of the European Patent Convention (EPC) which built on the principles suggested by the same Board in T 641/00. This decision, amongst others, but notably this one and T 641/00, significantly affected the assessment of an invention’s technical character and inventive step.

T 641/00, also known as Two identities/COMVIK, is a decision of a Technical Board of Appeal of the European Patent Office (EPO), issued on September 26, 2002. It is a landmark decision regarding the patentable subject matter requirement and inventive step under the European Patent Convention (EPC). More generally, it is a significant decision regarding the patentability of business methods and computer-implemented inventions under the EPC.

<span class="mw-page-title-main">Grant procedure before the European Patent Office</span>

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

<span class="mw-page-title-main">Internet as a source of prior art</span>

In the context of patent law, using the Internet as a source of prior art when assessing whether an invention is novel and inventive, may be problematic if it is difficult to ascertain precisely when information on websites became available to the public.

Article 84 of the European Patent Convention (EPC) specifies that the "matter" for which patent protection is sought in an application - the purported invention - shall be stated ("defined") in the claims. This legal provision also requires that the claims must be clear and concise, and supported by the description. The function, form and content of the claims are defined by Article 84 supplemented by Rule 43 EPC.

Article 123 of the European Patent Convention (EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable. In particular, Article 123(2) EPC prohibits adding subject-matter beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant.

Under the European Patent Convention (EPC), European patents shall be granted for inventions which inter alia involve an inventive step. The central legal provision explaining what this means, i.e. the central legal provision relating to the inventive step under the EPC, is Article 56 EPC. That is, an invention, having regard to the state of the art, must not be obvious to a person skilled in the art. The Boards of Appeal of the European Patent Office (EPO) have developed an approach, called the "problem-and-solution approach", to assess whether an invention involves an inventive step.

Under the European Patent Convention (EPC), European patents shall be granted for inventions which inter alia are new. The central legal provision explaining what this means, i.e. the central legal provision relating to the novelty under the EPC, is Article 54 EPC. Namely, "an invention can be patented only if it is new. An invention is considered to be new if it does not form part of the state of the art. The purpose of Article 54(1) EPC is to prevent the state of the art being patented again."

G 2/10 is a decision issued on 30 August 2011 by the Enlarged Board of Appeal of the European Patent Office (EPO) on the subject of disclosed disclaimers. It lies from decision T 1068/07 by Technical Board of Appeal 3.3.08, who referred a question to the Enlarged Board.

References

  1. ↑ Article 83 EPC
  2. ↑ Decision G 2/93 of the Boards of Appeal of the European Patent Office dated December 21, 1994, Reasons 4.
  3. ↑ Decision T 63/06 of 24 June 2008, reasons 2.2, ".. according to the well established case law of the Boards of Appeal .. the disclosure must be reproducible without undue burden." See also Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (10th edition, July 2022), ii.c.6.6 "Reproducibility without undue burden".
  4. ↑ Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (10th edition, July 2022), ii.c.5.4 "Invention to be performed over whole range claimed"; T 792/00 of 2.7.2002, Reasons 2; T 713/15 of 2.10.2019, reasons 4.4, fourth paragraph: "As a consequence of these findings, the subject-matter of claim 1 of the main request is not sufficiently disclosed over the whole scope of the claim."
  5. ↑ Decision T 0435/20 of 14.7.2022, reasons 23: "According to the established case law of the Boards of Appeal, a patent complies with the requirement of sufficiency of disclosure if the skilled person, on the basis of the information provided in the patent and taking into account the common general knowledge, is able to perform the invention as claimed in the whole range claimed without undue burden, i.e. with reasonable effort (...)."
  6. ↑ Decision T 0435/20 of 14.7.2022, reasons 60, first sentence.
  7. ↑ T 0989/16 (Post translationally modified glycoproteins/LIFE TECHNOLOGIES … of 4.12.2020, reasons 4: "The board follows the established case law that construing a claim with a mind willing to understand does not require that a technically broad term is interpreted more narrowly (see for example decision T 1408/04, reasons 1)."; reasons 4.2, first paragraph: "(...) a limiting feature mentioned in the description only (...) which is missing in the claims cannot be read into them and so inserted merely through interpretation. The only way is to amend the claims to incorporate it."; and reasons 4.2, second paragraph: "Since the method of claim 1 (...) does not comprise any unclear term requiring a further interpretation, there is no reason and no leeway to limit the clear wording of claim 1 to (...)"
  8. ↑ Decision G 2/93 (cited above), Reasons 10.
  9. ↑ Article 100(b) EPC
  10. ↑ Article 138(1)(b) EPC
  11. 1 2 Decision T 1329/07 of the Technical Board of Appeal 3.4.02 of 11 November 2010, point 2.2.3
  12. ↑ Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), ii.c.1 : "The burden of proof generally lies with the opponent to establish that an invention is insufficiently disclosed (...)"; and Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), ii.c.9 : "In order to establish insufficiency of disclosure in inter partes proceedings, the burden of proof is upon an opponent to establish, on the balance of probabilities, that a skilled person reading the patent, using his common general knowledge, would be unable to carry out the invention (see decision T 182/89, OJ 1991, 391)" (emphasis in the original).
  13. ↑ Decision T 63/06 of 24 June 2008, headnote: "The burden of proof generally lies upon an opponent to establish insufficiency of disclosure. (...)".
  14. ↑ Decision T 1727/12 of 1 February 2016, point 1.1: "A principle intrinsic to EPO proceedings is that the party who raises an objection bears the burden of proving it (see "Case Law of the Boards of Appeal of the EPO", 7th edition, 2013, III.G.5.1.1). The application of this principle to opposition proceedings leads to the conclusion that the burden of proof in respect of the grounds for opposition raised by an opponent lies on the opponent. (...)"
  15. ↑ Decision T 63/06 of 24 June 2008, headnote: "(...) When the patent does not give any information of how a feature of the invention can be put into practice, only a weak presumption exists that the invention is sufficiently disclosed (...). In such case, the opponent can discharge his burden by plausibly arguing that common general knowledge would not enable the skilled person to put this feature into practice."
  16. 1 2 Decision T 608/07 of 27 April 2009 of EPO Board of Appeal 3.3.03, Reasons 2.5.2.
  17. ↑ Decision T 1811/13 of 8 November 2016, Reasons 5.1, ninth paragraph.
  18. ↑ Decision T 990/07 of 23 February 2010, Reasons 3.2, second paragraph.

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