GL F III 5.3 Difficulties in performing the invention

An invention is not immediately regarded as incapable of being performed on account of a reasonable degree of difficulty experienced in its performance ("teething troubles", for example).

1st example: The difficulties which could, for example, arise from the fact that an artificial hip joint could be fitted to the human body only by a surgeon of great experience and above-average ability would not prevent manufacturers of orthopaedic devices from deriving complete information from the description with the result that they could reproduce the

GL F III 5.2 Absence of well-known details

For the purposes of sufficient disclosure the specification does not need to describe all the details of the operations to be carried out by the person skilled in the art on the basis of the instructions given, if these details are well-known and clear from the definition of the class of the claims or on the basis of common general knowledge (see also F‑III, 1, and F‑IV, 4.5).

GL F III 5.1 Only variants of the invention are incapable of being performed

The fact that only variants of the invention, e.g. one of a number of embodiments of it, are not capable of being performed does not immediately give rise to the conclusion that the subject-matter of the invention as a whole is incapable of being performed, i.e. is incapable of resolving the problem involved and therefore of achieving the desired technical result.

Those parts of the description relating to the variants of the invention which are incapable of being performed and the relevant claims must, however, then be deleted or marked background

GL F III 5 Cases of partially insufficient disclosure

5.1 Only variants of the invention are incapable of being performed

5.2 Absence of well-known details

5.3 Difficulties in performing the invention

GL F III 4 Burden of proof as regards the possibility of performing and repeating the invention

Although the burden of proof in the framework of sufficiency of disclosure as a rule lies with the party raising the objection, this principle does not apply to cases where the application as filed does not provide a single example or other technical information from which it is plausible that the claimed invention can be carried out (see e.g.

GL F III 3 Insufficient disclosure

Occasionally applications are filed in which there is a fundamental insufficiency in the invention in the sense that it cannot be carried out by a person skilled in the art; there is then a failure to satisfy the requirements of Art. 83 which is essentially irreparable. Two instances deserve special mention. The first is where the successful performance of the invention is dependent on chance.

GL F III 2 Art. 83 vs. Art. 123(2)

It is the responsibility of the applicants to ensure that they supply on filing their application, a sufficient disclosure, i.e. one that meets the requirements of Art. 83 in respect of the invention as claimed in all of the claims.

GL F III 1 Sufficiency of disclosure

A detailed description of at least one way of carrying out the invention must be given. Since the application is addressed to the person skilled in the art, it is neither necessary nor desirable that details of well-known ancillary features are given, but the description must disclose any feature essential for carrying out the invention in sufficient detail to render it apparent to the skilled person how to put the invention into practice.

GL F III – Sufficiency of disclosure

1. Sufficiency of disclosure

2. Art. 83 vs. Art. 123(2)

3. Insufficient disclosure

4. Burden of proof as regards the possibility of performing and repeating the invention

5. Cases of partially insufficient disclosure

GL F II 7.5 Omission of matter from publication

Generally, the Receiving Section will deal with matter falling under category 1(a) and may have dealt with matter obviously falling within category 1(b), but if any such matter has not been so recognised and has therefore not been omitted from the publication of the application, it is required to be removed during examination of the application together with any other prohibited matter.