EP 3 530 817 B1 relates to a working machine for adjusting the floor pressure distribution of the working machine.
Brief outline of the case
The OD revoked the patent for lack of sufficiency of the patent as granted and all AR on file.
The proprietor appealed.
The board held that sufficiency was given and remitted the case for further prosecution.
The opponent’s point of view
The patent does not clearly and completely disclose how the device can be configured to satisfy features 1.7 and 1.8. Furthermore, even if feature 1.5 is implementable as such, there is no disclosure regarding the use to which the measured values are put.
The requirements in features 1.7 and 1.8 are contradictory—and in any case irreconcilable—if the upper limit falls below the lower limit.
The patent lacks a clear disclosure supporting the proprietor’s interpretation that the “centre of gravity” in question refers not to the static centre of mass but to a “resultant centre of gravity” reflecting the sum of the moments (tilting moments and stabilizing moments) acting on the machine.
The reference in paragraph [0030] to the safety tilting angle required by the DIN EN 16228-1 standard does not contradict the aforementioned understanding of the centre of mass.
There is no direct and unambiguous disclosure supporting the patent proprietor’s assertion that the maximum ground pressure occurring beneath the track or undercarriage is to be used.
Although the loads and moments relevant to tipping might change continuously during operation, Claim 1 does not require continuous real-time adjustment and therefore encompasses even merely occasional optimization.
The ground for opposition under Art 100(b) requires a “clear and complete” disclosure that meets the “gold standard.” The disclosure in the figures does not satisfy this requirement.
The proprietor’s point of view
The patent discloses the invention sufficiently clearly and completely for it to be carried out by a person skilled in the art. Therefore, the ground for opposition under Art 100(b) does not preclude the maintenance of the patent as granted.
The board’s decision
The invention to which the ground for opposition under Art 100(b) relates is defined in the claims.
The criterion to be examined is whether the “European patent”, including the claims, description, and drawings, see, e.g., T 14/83, Reasons No. 3, and T 2051/23, Reasons No. 8.1.13, discloses the claimed invention “in a manner sufficiently clear and complete” for it to be carried out by a skilled person.
This is the case if the European patent contains sufficient information to enable a skilled person, using their CGK to identify the technical teaching inherent in the claimed invention and to carry it out accordingly, see G 2/98, Reasons No. 4, regarding the European patent application and the requirement of Art 83.
By contrast, the assessment of added subject-matter under Art 100(c) and Art 123(2) turns on whether an amendment was made within the limits of what a person skilled in the art could derive directly and unambiguously from the application documents as originally filed, using CGK, see G 2/10, Reasons No. 4.3; “gold standard”. These two tests are clearly different.
Regarding Art 100(c) and 123(2), where claims are amended, it must be determined whether the amended subject-matter is disclosed, in the application as filed.
By contrast, the examination under Art 83 and 100(b) focuses not on the disclosure of the claimed subject-matter itself, but rather on the disclosure of its enablement in the application or patent.
The requirement of correspondence between the technical information in the amended subject-matter and the original disclosure—expressed by the “Gold Standard” criterion of “directly and unambiguously” in the context of examining impermissible extension—cannot meaningfully be applied to the examination of enablement.
For instance, if the skilled person has a multitude of options available based on CGK to implement the claimed subject-matter, then it is enabled.
At the same time, however, selecting one of these options known in the art and incorporating it into the claim may go beyond what the skilled person can derive directly and unambiguously from the application documents as filed, taking into account CGK.
Contrary to the opponent’s view, the “Gold Standard” is therefore not the decisive criterion when examining the enablement of the invention.
The board added that, contrary to the opponent’s submission, it is not the “literal meaning of the claims” alone that is decisive, but rather the understanding of the skilled person, including “limiting and clarifying interpretations”—for example, based on standards known in the art or the description, which must always be taken into account, and referred to G 1/24, headnote.
The board then examined all the contentious features and came to the conclusion that the invention as claimed was sufficiently disclosed.
Comments
It might well be that the present invention is enabling in view of the CGK of the skilled person, but claiming that the “gold standard” is only applicable when it comes to added matter is going one step too far.
It is nothing new under the sun that when assessing sufficiency, it is not enough to look at the claim but at the whole original disclosure. When it comes to added-matter, the starting point is the original disclosure as for sufficiency.
Whilst G 2/98 and G 2/10 are indeed aligned with one another, I fail to see in Reasons 4 of G 2/98 any reference to Art 83. Art 83 is mentioned in G 2/98 in Point II(vii) of the “Facts an submissions” in relation to T 77/97. This decision is mentioned inter alia in Reasons 1 of G 2/98.
The role of the CGK for enablement and added-matter
The case is interesting in that both when assessing compliance with the “gold standard”, and sufficiency of disclosure, the notion of CGK of the skilled person plays a key role.
The present decision could be understood that, when it comes to sufficiency, more importance should be given to CGK to fill the gaps in the disclosure, than when it comes to added matter.
Why should this be the case? The present decision fails thus to convince.
The headnote of G 1/24 simply mentions that the description has to be consulted but does not indicate what the result of the consultation should be. It is thus not correct as the board did, to allege that “limiting and clarifying interpretations” should be read into the claim. There are plenty of decisions, but T 439/22, which have established that a limiting interpretation is only taken into account when the claim is amended accordingly.
Further reasons
- It is manifest that in case of an incomplete disclosure, any attempt to overcome the insufficiency by adding new information to the original disclosure, leads invariably to an objection of added matter.
- If the disclosure in the priority is not enabling, the priority is not valid, see T 0107/09, Reasons 9, T 0521/10, Reasons 3, or T 0883/23, Reasons 1.5. See also CLBA, 11th edition 2025, II-D, 4.6.
If completing an insufficient disclosure ends with an objection under Art 123(2) and if the priority is not valid when the priority disclosure is not enabled, it is difficult not to see that the “gold standard” applies in both situations as the same criterion applies to added matter under G 2/10, and validity of the priority under G 2/98.
Comments
7 replies on “T 0987/24-The gold standard does not apply when it comes to sufficiency (?)”
Thank you for this interesting post. I admit I struggle to understand what is unconvincing about the decision, as it appears to align with my understanding of support and sufficiency. In particular, I have always understood there to be greater flexibility for sufficiency than for added matter, because “without undue burden” is a lower threshold than “directly and unambiguously derivable”.
By way of example, consider claim 1 of a patent directed to:
“A method for processing a liquid, comprising cooling the liquid to a first temperature, extracting a fraction of the liquid, and then heating the fraction to a second temperature which is 5°C higher than the first temperature.”
The description states that “the first temperature is preferably about 20°C to 22°C, but the ideal value depends on the composition of the liquid”, thereby providing the skilled person with guidance on how to carry out the invention.
Suppose it later becomes apparent that, for a particular liquid composition, the method only works when the first temperature is 21.4°C and the second temperature is 26.4°C. Identifying these values would likely be regarded as involving routine experimentation rather than an undue burden, and thus would not be a sufficiency problem. However, that does not mean that the claim can be amended to:
“A method for processing a liquid, comprising cooling the liquid to 21.4°C, extracting a fraction of the liquid, and then heating the fraction to 26.4°C.”
Such an amendment would still contravene A.123, since these specific temperature values are not directly and unambiguously derivable from the application as filed. Is this not the distinction the Board is making in the present case, or am I misunderstanding their reasoning?
I agree. Guidance on how to carry out the invention must not be equated to support in the description, even including what is implicit.
The Board’s rejection of the gold standard for sufficiency seems consistent with the generally liberal approach of the EPO as to broad claims.
Mr Hagel,
Please see my reply to anonymous.
@ Anonymous,
It is manifest that in your example, the claim cannot be amended to 21,4°C and 21,4°C. That is was not what I meant.
Where I disagree is whether the description is sufficient in your example. The temperature range might be disclosed, but we do not know anything about the liquid at stake, the class of liquids at stake, or the fraction of the liquid to be extracted.
For me “directly and unambiguously derivable” as well as “undue burden” both rely on the skilled person, which for me is the same skilled person., or do you think that there is a different skilled person when it comes to sufficiency and/or added matter.
I agree it is the same skilled person for A.123 and A.83. I do not believe this decision tries to change that fact.
As I see it, the difference between A.123 and A.83 is what task is given to the skilled person. In A.83 they are asked to carry out the invention. The patent application does not have to spell out every single example falling within the claim, it just needs to allow the technical teaching to be extended to most of what the claim covers without undue experimentation. In A.123 the skilled person is asked what is unambiguously derivable from what is in the application. Here, there is no room for gaps to be filled by experimentation.
I see this decision as consistent with existing case law. Even if it is obvious how to work the invention for a particular embodiment, that does not mean the embodiment is unambiguously disclosed (cf. CLR II-E 1.3.4: “a clear distinction had to be made between the questions whether a particular embodiment was disclosed by an application, be it explicitly or implicitly, or/and whether that embodiment was merely rendered obvious by the application’s disclosure”). In contrast, a patent can be sufficient even when the claim encompasses examples that fail if those failures can be avoided by making non-inventive modifications to the disclosure (cf. CLR II-C 6.6.1: “occasional failure of a process as claimed does not impair its reproducibility if only a few attempts are required to transform failure into success, provided that these attempts are kept within reasonable bounds and do not require an inventive step”).
I recently tried to argue the golden standard in insufficiency in opposition. The patent did not disclose a specific example and the prelim opinion was that the skilled person would derive how to reproduce the invention based on the general disclosure. I tried to argue that, according to the strict appliance of added matter, the skilled person would, for each feature of the claim, look at the paragraph, select one among the lists of alternatives for this feature. Consequently, with the same interpretation for added matter, this specific derived example is not disclosed. I failed to convince the Division…
@ Anonymous 2,
You clearly exemplify what I actually criticise in this decision. It appears to introduce a different skilled person when it comes to sufficiency than for added-matter.
Without any specific example, sufficiency is rather dubious. Your example shows well that fitting the gaps in an insufficient disclosure can only be overcome with adding matter to the original disclosure. Hence it is the same skilled person which should decide in both cases.