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According to the established case law of the boards of appeal Art. 84 EPC (substantively unchanged in EPC 2000) has to be interpreted as meaning not only that a claim must be comprehensible from a technical point of view, but also that it must define the object of the invention clearly, that is to say indicate all the essential features thereof. All features which are necessary for solving the technical problem with which the application is concerned have to be regarded as essential features; see on this issue T 32/82 (OJ 1984, 354) and T 115/83, confirmed inter alia in T 269/87, T 391/91, T 409/91 (OJ 1994, 653), T 694/92 (OJ 1997, 408), T 1055/92 (OJ 1995, 214), T 630/93, T 61/94, T 488/96, T 1167/97, T 203/98, T 260/01, T 1069/01, T 844/02 and T 813/03. The indication of all essential features is seen in part as necessary to meeting the clarity requirement, in part as a prerequisite for the support function laid down in Art. 84, second sentence, EPC 1973 (see below under section 4, claims supported by the description, and in part it is inferred from Art. 84, first sentence, EPC 1973 in conjunction with R. 29(1) and (3) EPC 1973.
In T 409/91 the invention related to mineral oils containing paraffin wax. The inventors found that waxy fuels having wax crystals of sufficiently small size at low temperatures to pass through paper filters used in diesel engines could be obtained by using additives with a structure described in the application by a general formula. The claims did not mention the additives.
The board held that the claims did not define the matter for which protection was sought by reference to all its essential technical features as required by Art. 84, first sentence, EPC 1973: in the description of the application in suit the use of certain additives was presented as an essential constituent of the fuel oil composition. As this feature was missing in the claims, the board found that they defined some other invention which was not sufficiently disclosed. The board further held that the requirement that the claims be supported by the description (Art. 84, second sentence, EPC 1973) reflected the general legal principle that the extent of a patent monopoly, as defined by the claims, should correspond to the technical contribution to the art. Claims should not therefore extend to subject-matter which would still not be at the disposal of a skilled person after reading the description. Consequently, a technical feature described and highlighted in the description as being an essential feature of the invention also had to be part of the claims.
In T 914/02 the appellant sought to derive from the alleged sheer complexity of the proposed solution an implied use of technical means, in particular a computer. According to the board, it was doubtful as a matter of principle whether complexity could be used to disqualify an activity as a mental activity (see also under I.A.1.4.2). Rather, it would appear generally that if computer means were indeed indispensable, they should be included in the claim as an essential feature of the invention.
In T 818/03 the board considered that a method claim which did not state sufficiently clearly the steps by which a particular result was achieved might still be considered clear provided the result to be achieved was clearly defined, and a claim which defined a method of achieving some less than clearly defined result might also still be considered clear provided the steps that needed to be taken to achieve that result were sufficiently clearly defined. However, a claim must be considered to lack clarity if, as here, it set out insufficiently clearly both the necessary parameters of the method and the relevant characteristic features of the result.
In G 1/04 (OJ 2006, 334) the Enlarged Board recalled that an independent claim within the meaning of R. 29 EPC 1973 should explicitly specify all of the essential features needed to define the invention, and the meaning of these features should be clear for the person skilled in the art from the wording of the claim alone. The same should apply mutatis mutandis in respect of a claim relating to the subject-matter excluded from patent protection under Art. 52(4) EPC 1973 (Art. 53(c) EPC). These requirements served the overriding purpose of legal certainty.
The Enlarged Board took the view that a diagnostic method within the meaning of Art. 52(4) EPC 1973 had an inherent and inescapable multi-step nature. If diagnosis as the deductive medical or veterinary decision phase was a purely intellectual exercise, the feature pertaining to the diagnosis for curative purposes and the features relating to the preceding steps which were constitutive for making the diagnosis represented the essential features of a diagnostic method within the meaning of Art. 52(4) EPC 1973. Thus, in order to satisfy the requirements of Art. 84 EPC 1973, an independent claim relating to such a method must include these features.
The essential features necessary for clearly and completely defining a particular invention were for the most part of a technical nature. But, if a non-technical feature was to be regarded as constitutive for defining the invention, it must likewise be included as an essential feature in the independent claim. Thus, although diagnosis stricto sensu was a purely intellectual exercise unless it was carried out by a device, the feature pertaining to it was such an essential feature as to be included in the independent claim. The same applied to a feature relating to a method step of a non-technical nature belonging to the preceding steps which were constitutive for making the diagnosis for curative purposes. As regards, in particular, the non-technical feature pertaining to diagnosis for curative purposes, it was to be included as an essential feature in the respective independent claim if its essentialness was unambiguously inferable from the respective European patent application or European patent as a whole. This was the case if the application or patent in question disclosed a method for obtaining findings of diagnostic relevance which allowed the attribution of the detected deviation to a particular clinical picture (on the principal issues of this decision, see Chapter I.A.2.5.)