Sufficiency of disclosure within the meaning of Art. 83 EPC must be assessed on the basis of the application as a whole - including the description and claims - (see leading decisions T 14/83, OJ 1984, 105; and also T 169/83, OJ 1985, 193) and not of the claims alone (see e.g. T 202/83, T 179/87 of 16.1.1990, T 435/89, T 82/90, T 126/91). The drawings must be considered as ranking equally with the other elements of the application when considering whether the requirements of Art. 83 EPC (and Art. 84 EPC) have been satisfied (see T 169/83, OJ 1985, 193; T 308/90 and T 818/93).
In T 32/84 (OJ 1986, 9) it was pointed out that the fact that certain elements of an invention essential to its operation were not referred to explicitly either in the claims, or in the relevant portion of the description nor shown in the drawing of the invention as claimed did not necessarily mean that the application did not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art as required by Art. 83 EPC 1973. This decision was cited, inter alia, in T 391/91, T 830/02 and T 25/09.
According to established case law, substantially any embodiment of the invention, as defined in the broadest claim, must be capable of being realised on the basis of the disclosure. This implied in particular that an objection of insufficiency could be raised against the subject-matter of any claim, independent or dependent (R. 29(3) EPC 1973, now R. 43(3) EPC). From a legal point of view it was therefore irrelevant whether or not the feature objected to was essential or to what degree the scope of protection conferred by the patent depended on the claim in question (T 226/85 (OJ 1988, 336), cited in many decisions, for example, T 1011/01 and T 1129/09). The board in ex parte case T 206/13 could not accept the appellant's submissions to the effect that preferred or optional features defined in a claim should be disregarded in the assessment under Art. 83 EPC. According to the established case law the requirement of sufficiency of disclosure defined in Art. 83 EPC was only complied with if the disclosure of the invention allowed the skilled person to perform, without undue burden, essentially all the embodiments covered by the claimed invention. This applied in particular to the specific particular embodiments of an invention defined in dependent claims pursuant to R. 43(3) EPC (T 1011/01) and, by the same token, to any optional feature defined in a claim, since such a feature also constituted, by its very nature, a particular embodiment of the claimed invention, irrespective of whether the optional feature was qualified as being "preferred" or not.
Disclosure is insufficient if the skilled person, taking into account the entire teaching of the patent, cannot rework an invention which is defined in the claims in a completely clear and comprehensible manner, unless he disregards a meaningful feature. (T 432/10).
An objection of insufficient disclosure under Art. 83 EPC cannot legitimately be based on an argument that the application would not enable a skilled person to achieve a non-claimed technical effect (T 2001/12, citing mainly G 1/03 (OJ, 2004, 413) but also T 1079/08, T 939/92 and T 260/98). T 2001/12 clarified the distinction between the requirements of sufficiency of disclosure (Art. 83 EPC), clarity of the claims (Art. 84 EPC) and inventive step (Art. 56 EPC). That decision was cited in T 862/11, in which the board addressed the relevance of the technical effect for the purposes of Art. 83 EPC and concluded that a distinction had to be made between how the effect was to be considered in that context and how it was to be considered for the purposes of Art. 56 EPC.
T 206/13 also applied T 2001/12, in so far as the examining division, in the context of the assessment of sufficiency of disclosure of claims 1 and 11, had referred to technical aspects which, in its opinion, were not sufficiently disclosed. The board pointed out that these technical aspects were not defined in claims 1 and 11 and, consequently, were not to be considered in the assessment under Art. 83 EPC of the invention defined in claims 1 and 11. The requirement of sufficiency of disclosure related to the invention defined in the claims, and in particular to the combination of structural and functional features of the claimed invention, and there was no legal basis for extending such a requirement also to encompass other technical aspects possibly associated with the invention (in particular, technical features or effects mentioned in the description) but not required by the claimed subject-matter. Such technical aspects might be pertinent in the assessment of other requirements of the EPC (in particular, the requirements of Art. 84 and 56 EPC).
Date retrieved: 30 December 2018