No. of citations: 205
T 409/91 looked at the relationship between sufficiency of disclosure (Art. 83) and support by the description (Art. 84). It found that both are interrelated, because they both express the same principle, namely that the scope of protection should be commensurate with the contribution that the invention makes to the prior art (point 3.5 of the reasons).
Claim 1 of the application in dispute read:
"Distillate fuel oil boiling in the range 120 C to 500 C which has a wax content of at least 0.3 weight% at a temperature of 10 C below the Wax Appearance Temperature, the wax crystals at that temperature having an average particle size less than 4000 nanometres."Claims 2 to 5 defined smaller upper limits of the particle size down to 1000 nanometres. It was claimed by the applicant that the small size of the wax crystals reduced the undesired "cold clogging" otherwise observed with wax crystals in fuel oils.
Only one way of obtaining "wax crystals at that temperature having an average particle size less than 4000 nanometers" was disclosed in the application as-filed, namely a process which produced wax particles having an average particle size of 1200 nm. No way of obtaining wax crystals of 1000 nm (as claimed in claim 5) was disclosed.
The Examination Division refused the application for two reasons: Firstly they found that claim 1 was insufficiently disclosed, because the invention could not be carried out within the whole area claimed, i.e., no method was disclosed yielding a particle size of less than 1200 nm. Secondly, the Examination considered that the claim did not meet the requirement of Art. 84, first sentence, in combination with Rule 29(1) EPC1973 (now Rule 43(1)), so that the claim as a whole did not define (state all the essential elements of) the matter for which protection was sought (i.e. the fuel oil) in terms of technical features.
The Appeal Board analysed the application and concluded that for obtaining the inventive small wax crystals, the presence of certain "additives", which were disclosed in the description and present in all of the "examples", were indeed necessary to obtain the inventive small wax crystals. The Board hence considered the presence of such additives was an "essential feature" of the invention, which was missing in the claims. With reference to T 133/85 they stated that a technical feature which is described and highlighted in the description as being an essential feature of the invention, must also be a part of the independent claim or claims defining this invention (point 3.3 of the reasons). The claims thus infringed Art. 84 EPC.
The Board also found that the claims lacked sufficiency of disclosure (Art. 83) for very similar reasons. The Board stated:
"Although the requirements of Article 83 and Article 84 are directed to different parts of the patent application, since Article 83 relates to the disclosure of the invention, whilst Article 84 deals with the definition of the invention by the claims, 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." (point 3.5 of the reasons)The Board judged that the reasons why the claims were insufficiently disclosed in this case were in effect the same as those that lead to their infringing Art. 84 EPC, namely that the invention extends to technical subject-matter not made available to the person skilled in the art by the application as filed,. In particular, as was not contested by the appellant, no information was given to perform the claimed invention successfully without using the structurally defined "additives".
The Applicant argued that the claims were sufficiently disclosed, for the reason alone that the application disclosed one way of carrying out the invention. However, the Board did not accept this. They stated:
"... the Board does not accept the appellant's submission that sufficiency should be acknowledged simply because one way of performing the invention was disclosed. In the Board's judgement, the disclosure of one way of performing the invention is only sufficient within the meaning of Article 83 EPC if it allows the person skilled in the art to perform the invention in the whole range that is claimed ...".As a consequence, the appeal was dismissed.
Remark: It remarkable that the Board in this case considered the invention to be insufficiently disclosed, although the required features for obtaining the small wax crystals (i.e., the required "additives") were disclosed in the description. The argument frequently made by applicants and proprietors, that it is sufficient for complying with Art. 83 that the description taught how to carry out the invention, is hence not always correct. If essential features are missing in a claim, the claim effectively extends to embodiments that are not accessible with the information given in the patent/application (namely those embodiments that do not employ the essential features), and therefore the invention as defined by the claims - as a whole - is insufficiently disclosed.
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Headnote:
The questions of sufficiency and of support by the description are questions of fact which have to be answered on the basis of the available evidence having regard to the balance of probabilities in each individual case. Although the requirements of sufficient disclosure of the invention (Art. 83 EPC) and support by the description (Art. 84 EPC) are related to different parts of the patent application, they give effect to the same legal principle that the patent monopoly should be justified by the technical contribution to the art. Therefore, the extent to which an invention is sufficiently disclosed is also highly relevant for the answer to the question of support (points 3.3 to 3.5 of the Reasons).The full text of the decision can be found here.
Quotes from decisions citing T 409/91 can be found here.
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