EP 3 236 167 B1 relates to the configuration of a ventilation system by component in selection.
Brief outline of the case
As granted claim 7 lacked N, and the same applied to AR1-3, the patent was maintained according to AR4, in which claim 7 was deleted.
Opponent 2 appealed the decision.
An important part of the opponent’s ground of appeal was a lack of sufficiency.
The board confirmed the OD’s decision.
An important part of the board’s decision acknowledging sufficiency extend over 15 pages, whereby only 2 are dealing with the topic of the present blog.
Opponent’s 2 point of view on sufficiency
The invention as defined in claim 1 of AR 4 (i.e. claim 1 as granted) contained several gaps and open questions. According to case law, a claim must contain all essential features needed in order to carry out the invention. It is not enough if essential features are mentioned somewhere in the description. Otherwise, essential features could be hidden or outsourced in the description, and hence a broader scope of protection be obtained.
The opponent argued that, due to missing essential features, the scope of protection of claim 1 was broadened to an extent that violated the “general principle that the protection obtained with the patent had to be commensurate with the disclosed teaching”.
The subject-matter of claim 1 was thus broader than justified by the disclosure in the patent, and the invention was not disclosed in a manner sufficiently clear and complete for it to be carried out by a skilled person.
The board’s decision on sufficiency
Contrary to the uncited alleged case law referred to by the opponent, it is generally not sufficient to establish a lack of clarity of the claims to establish lack of compliance with Art 83. Rather, it is necessary to show that the patent as a whole, i.e. not only the claims, does not enable the skilled person – who can avail themselves of the description and their common general knowledge – to carry out the invention.
In the current case, the board has shown how the skilled person’s common general knowledge and the patent as a whole provide information missing from claim 1, and enable the skilled person to carry out the invention.
The board did also not share the opponent’s concern that due to missing essential features the scope of protection of claim 1 was broadened to an extent that violated the “general principle that the protection obtained with the patent had to be commensurate with the disclosed teaching”.
Features which are not explicitly defined in claim 1 but, as understood by a skilled person, must inevitably be present, are implicit features of claim 1 which limit its subject-matter.
Regardless of whether an explicit specification of an allegedly essential feature is missing from present claim 1, which corresponds to claim 1 as granted, may be an issue under Art 84 which cannot be considered in opposition proceedings pursuant to G 3/14, it does not represent an insufficiency of disclosure as the skilled person is aware that this feature must be present and of how it can be reduced to practice.
In summary, none of the objections submitted regarding insufficiency of disclosure are convincing.
Taking into account implicit features and the skilled person’s common general knowledge, the patent discloses the invention as defined in claim 1 in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Hence, the ground for opposition under Art 100(b) does not prejudice the maintenance of the patent according to AR4.
Moreover, features which are disclosed as essential or explained in more detail in the description will be taken into account when determining the scope of protection under Art 69(1) and the Protocol on the Interpretation of Art 69. Hence, in the board’s view, the disclosure gaps submitted by the appellant – if present at all – do not bring the above-mentioned legal principle out of balance.
Comments
Whilst common general knowledge and the description as a whole have to be taken into consideration in order to assess sufficiency, if essential features are missing in granted claims, this can pose a problem in opposition.
The missing of essential features in a granted claim cannot be queried in opposition as this is, as noted by the board, an objection of lack of clarity not allowable under G 3/14.
When one sees the great difficulties and lengthy justifications needed by the board to show that sufficiency is given, the lack of essential features in granted claim 1 is manifest.
On the procedure
As the ESR had only revealed two documents of category A,D and one of category A, the ED could proceed directly to grant.
Claim 7 as granted was lacking N over D1=US 2011/0046801. This document was missing from the ESR, although it was classified in IPC and CPC classification units in which the European patent was classified and which the search was allegedly carried out.
Before an independent claim can be considered novel and inventive, it ought to be checked whether the independent claim contains all essential features necessary to obtain the desired effect.
Even in view of the A documents in the ESR, this did not dispense the ED from checking clarity and the presence of all essential features.
In view of the work the board experienced to establish sufficiency, this has manifestly not been done by the ED.
It is correct that, in post EPO procedures, the claims can be interpreted under Art 69(1) and Art 1 of the Protocol, this does not dispense an ED to do its job properly and ensure that all essential features are present in the claim before grant.
The present case is illustrating what can be called the “Super BEST Effect”. A ESR containing only A documents leads in general to a direct grant and is thus very positive for the production/productivity of all involved.
All involved in the procedure benefit from it: the examiner in charge, the team, the directorate and the EPO as well as national offices. The task of the EPO is however to grant solid patents and not patents in which an independent claim lacks N over a docuent which should have been found.
The blame is not entirely to be borne by the ED. The ED simply plaid the game wished by EPO’s upper management: grant, baby, grant….
Some overall figures for 2024
The above conclusion is to be put in contrast with figures for final actions based on published decisions of the boards in 2024 (1108 final actions in total). After appeal in opposition, 50% of patents are revoked, 35% are maintained in amended form, and only 15% survive an opposition.
.In 126 further decisions, the case was remitted to the OD for further prosecution because the board did not agree with the OD’s decision..
In view of the valid RPBA, what has been missed in first instance can rarely be introduced in appeal. This means that only in a handful of cases, the decision of the board was taken on a different independent claim. In this respect, some boards are more lenient than others when claims are deleted or combined.
Caution is due
Oppositions are by no means an absolute criterion for assessing the quality of granted patents, but allow to get a good feel of what could be going on.
The above figures are also to be seen in the light of the fact that around 70% of decisions of ODs were set aside by the boards and in roughly 10% of the cases, opponents brought prior art which could not be found in the search files, like PPU, PhD dissertations and the like.
Comments
6 replies on “T 1826/21 – Insufficiency of disclosure vs. missing essential features in opposition”
Thanks for your comments on this case. I have not read the case in detail, but am surprised that the case moved to allowance without any prior art objections and without any essential features objections, as this clashes with my experience. Essential features objections provide an easy way to refuse applications without needing to read prior art. It has become increasingly common to see examination reports where the only objection is “the claims are novel and inventive, but features A-C are essential.” To provoke some debate, my view is the essential features doctrine has always been troublesome and needs to be fundamentally revised. It originates from T 0032/82:
’14. With respect to the use of a resistor the following is observed. In his letter of 06.06.83 the applicant has stated that “this resistor must have a low impedance compared with that of the transformer primary inductance and the reflected impedance of the ignition element circuit”. In his letter of 11.11.83, however, it is stated that “the resistor value would need to be comparable with the impedance of the transformer and detonator circuit … at the lowest frequency at which the additional protection … is required to begin to take effect”. These two conditions, neither of which can be found in the application as filed, do not coincide but even so it is clear that to obtain the desired effect it is essential that the resistance meets certain requirements as to its value.
15. Article 84 EPC requires amongst other things that the claims, which define the matter for which protection is sought (i.e. the object of the invention as implied by Article 52(1) EPC) be clear. The Board of Appeal considers that this has to be interpreted as meaning not only that a claim from a technical point of view must be comprehensible, but also that it must define clearly the object of the invention, that is to say indicate all the essential features thereof. As essential features have to be regarded all features which are necessary to obtain the desired effect or, differently expressed which are necessary to solve the technical problem with which the application is concerned. In the present case, Claim 3 which does not state an essential feature concerning the resistor (80) does in this respect not satisfy Article 84 EPC and is thus not allowable.’
The board created a doctrine to refuse an application they did not like, by interpreting the statute in a way which enabled them to use the applicant’s words against them. As is often the case with the EPO, a simple idea spiraled. It would be preferable for essential features to be removed from clarity entirely and for them to be dealt with under sufficiency and inventive step, where they can be considered in opposition. It is perfectly possible to write a claim describing a circuit that is completely intelligible (is clear), but which cannot work at the claimed level of generality (probably lacks sufficiency) and which provides no advantage (probably lacks inventiveness).
@ Anonymous
Thanks for your comments and drawing the attention to T 32/82.
As I explained in my comments, only quoting A documents in the search report, implies in general a direct grant. This is what I call the super BEST effect.
I have always been of the opinion that only if the requirements of Art 84 are fulfilled, i.e. clarity and support, that an independent claim can proceed to grant. Even if the independent claim is clear, it also ought to be checked that the same applies to all dependent claims. When a dependent claim is incorporated in the independent claim, the other independent claims are often simply renumbered. This can bring about a clarity problem, but in some cases, even a problem of added matter.
When I used to be a director statements of the kind “the claims are novel and inventive, but features A-C are essential” always ended up with the case being sent back to the examiner. If the subject-matter of a claim is new and inventive, it was necessarily clear as such. It cannot be new and inventive if the claim is unclear. The logic of deciding first on patentatibilty and then coming up with a lack of clarity is highly questionable.
What should be done in such a situation is first to state that the claim is unclear, for instance, when essential features are missing in the claims, give an interpretation of the claim, and then decide on the basis of this interpretation whether novelty or inventive step are given. This also avoids sending two successive communications, one about clarity and then about patentabilty.
Given a possible interpretation of the claim, for instance by stating why essential features are missing, only then it can be decided whether its subject-matter is novel and inventive.
Clear means that a claim should mention all necessary features in order to obtain the desired effects or for solving the technical problem, cf. T 2131/12, T 1181/14 or T 2238/10. This is exactly what is said in T 32/82, Reasons 15.
In T 32/82, the applicant itself varied in this interpretation of the claim and came with two contradictory positions, whereby, neither of which can be found in the application as filed, do not coincide but even so it is clear that to obtain the desired effect it is essential that the resistance meets certain requirements as to its value. What else than to conclude that, since the applicant himself does not know what he wants, the only conclusion is that the subject matter of the claim is indeed unclear.
As far as clarity, is concerned, and this includes essential features, there is an interplay between Art 83, 84 and 56. I refer here to T 2001/12, which builds itself on G 1/03.
The catchword of T 2001/12 can be summarised as follows:
All essential features, i.e. those providing the solution to the problem, need to be present in the independent claim, cf. Art 84. This is manifestly only possible if they have been originally disclosed.
If the effect is not claimed and if it does not appear credible that the invention as claimed would actually be capable of solving the problem, then an objection under Art 56 is to be raised.
If the effect is claimed and if it does not appear credible that the invention as claimed would actually be capable of solving the problem, then an objection under Art 83 is to be raised.
I think that the catchword of T 2001/12 answers the questions/comments you raise in the last paragraph of your entry.
There are two maxims which, to me, are i) so strong as to be unarguable, and ii) underlie all the specific objections to allowance of a claim. As to which Article of the EPC is used, to deliver these two maxims, is for me not so important as adherence to the maxims. Compare how differently the EPC and the US patent statute formulate objections to patentability whereby the same defect leads to refusal under different paragraphs of the respective statute in the two jurisdictions.
First maxim: a claim that merely recites the problem to be solved is no good. Rather, it must define the new and inventive solution to the objective technical problem.
Second maxim: the granted scope should correspond to the contribution to the art and go no wider than that. As to this, I read above that the Board considered and confirmed that the protection given was commensurate with the disclosure. Here, I must say that I find myself wondering whether the Board would also have agreed with the ED if the Division had found the claim too wide. I’m thinking of management pressure on Boards, not to reverse an ED or an OD unless to do otherwise would be offensive.
Obviously, the first pre-requisite to deciding whether the claim is too wide is a good quality patentability search. But isn’tt that getting ever more expensive to perform? Is quality of search at the EPO dwindling under pressure to deliver output?
On the issue of pressure to deliver output, I saw today in another patent law blog that the US family member to EP20 204 009.3 has gone through two instances of inter Partes litigation on an enablement issue which the patent owner has now appealed to the US Supreme Court. The EP application is a divisional, which the ED is examining robustly. Now, the point is, the EP parent seems to have sailed through to issue with minimal difficulty. So, could it be that events in the US family member have served as a Wake-up Call and stimulated the EPO to look more closely at the patentability of the claims?
In general, are the Patent Offices of the world moving away from a role of policing patentability at the cost of all applicants for patent, and into a role of adjudicating patentability only when an interested party steps up and pays for it?
Dear Max Drei,
I do agree with your first maxim: “a claim that merely recites the problem to be solved is no good. Rather, it must define the new and inventive solution to the objective technical problem”. According to a former head of the Philip’s patent department such a claim is a “free beer claim”. This is however not to be confused with a functional definition of features, but there are strict conditions to be fulfilled in order to be allowable.
I do also agree with your second maxim: “the granted scope should correspond to the contribution to the art and go no wider than that”. The granted scope is however different from the scope which can be decided by a national court or the UPC, cf. Art 69(1) and Art 1 of the protocol.
I do not agree with you that there is “management pressure on Boards, not to reverse an ED or an OD unless to do otherwise would be offensive”. If this would be the case we would not see 70% of decisions of ODs being set aside by boards. As I concentre on oppositions, I do not have figures for examination, but my feeling this is much less the case. The management of the boards wants a lot of cases decided for good, and in order to be re-appointed, board members hve to show a certain “perormance”, whereby the “performance criteria” are kept secret.
In the present case, the board did a good job, and in spite of the sub-optimal search and examination, tried to do justice to the proprietor and did not simply dismiss the opposition on formal grounds. The board did actually do what the ED should have been doing.
I rather see the pressure to be on ED’s to grant as much as possible patents. To paraphrase a well known say: grant, baby, grant!
Just an example: the field of business methods is well known for its high refusal rate. From a very reliable source, I know that the domain has now been transferred to a directorate well known for its high production. The number of refusals have dwindled so rapidly that even the existence of the board dealing with this subject matter is questioned.
The pressure is also on ODs to deal with as much cases as possible in the minimum time possible. This also explains the high setting aside rate in oppositions.
During any OP, in which the members do not sit together, the representative being the more forthright gets his way. After the OP, the first examiner drafts a decision, the second examiner drafts minutes without caring whether they tie up with the decision, and then the chair signs both without batting an eyelid. This is a pattern which can be seen in all substantial procedural violations I have come across.
That there is a problem with the quality of the search can be deduced from the fact that it only roughly 10% of the cases that opponents bring documents which could genuinely not be present in the search files. When after a list of A or X documents in a search report, the opponent comes with the correct prior art leading to either revocation or severe restrictions, then something went wrong during the initial search. This is the worse when the opponent comes with prior art under Art 54(3).
Unless third party observations have drawn the attention on what is happening in the US, I doubt that the EPO will look at what has been going on the other side of the Atlantic. As institution it thinks it is better than the USPTO.
Any patent system with substantive examination before grant has been set up with the aim of only granting patents worth a temporary monopoly. Patent offices actually represent an invisible stakeholder, the public at large. The public at large should not be hampered by invalid patents. Under the 1844 Patent Act in France, with a simple registration system, a well-known litigation lawyer has said: the proprietor discovers its patent on the day of infringement. If nowadays it boils down to the same, then patent office have no justification.
It is possible to accept that “Patent Offices of the world [move] away from a role of policing patentability at the cost of all applicants for patent, and into a role of adjudicating patentability only when an interested party steps up and pays for it”. This does however represent a change of paradigm which is not of the competence of the patent offices but in that of the legislator and society at large.
It could be accepted that only patents which are challenged are scrutinised, but there again, it is a change of paradigm which cannot be decided by the offices themselves, but by society at large.
On the other hand, during my active time I heard often the comment: I grant, if somebody is not pleased, he has to oppose. This is however not why examining patent offices have been set up.
It will be interesting to see what will happen to patents used at the UPC against potential infringers. Will they be so strong as to withstand a validity challenge by alleged infringers. It is to be expected that the UPC will be more lenient as the EPO in matters of validity, but there will be limits. To my knowledge, the EPO has never published statistics about the survival rate of validated patents in front of national courts when their validity has been challenged. One wonders why?
Thanks for highlighting this decision. A missing alleged essential feature v sufficiency is also central to the on-going battle at the EPO in the biotechnology field over CRISPR-Cas9 gene-editing technology (often referred to as the missing PAM issue). No appeal decision on this yet due to withdrawal of appeals re EP2800811B and EP3401400B of University of California et al in September last year by disapproval of grant texts. However, in on-going opposition against a divisional and recent additional allowance reliance also placed on CGK of assumed skilled team to deal with issue. Not involved with these matters but like many keeping an interested eye.
@ Dr Claire Irvine
Thanks for your comments.
T 2001/12 seems to be an important decision as it has been cited in lots of later decisions.
Some of those later decisions quoting the T 2001/12 can be mentioned here.
Although dealing with a product, the composition of the product in T 1480/21 had to fulfil a series of functions, hence an effect was indirectly claimed. The objection was then Art 83, but was dismissed.
In T 1469/16, in the absence of a claimed effect, lack of inventive step was the objection .
In T 2246/19, the board set aside the refusal and considered that, in the absence of a claimed effect, sufficiency was given. After remittal, the application has been refused for lack of inventive step.
T 862/11 is interesting in view of its catchword/headnote.
Where inventions are defined by claims which contain unclear features, such as unclear parameters, which are also not clarified by the description, the invention may only be understood by the effect to be achieved. This effect, which must therefore be taken into account, is then examined under Art 83 in order to assess the sufficiency of disclosure.
To the extent that the claim is clearly defined and the effect is not present in the claim, the question of whether the effect is achieved is not relevant for Art 83.