Zusammenfassung von EPC2000 Art 083 für die Entscheidung T0552/22 vom 19.09.2023

In T 552/22 the invention lay in the field of fermentative production of human milk oligosaccharides, in particular the production of fucosyllactose. While the SET family of proteins comprised proteins SetA, SetB and SetC, claim 1 was not limited to these three proteins but related generally to any protein of the SET family of proteins. Implementation of the claimed functional requirement of the bacterial cells required that overexpression of the protein of the SET family leading to an export of fucosyllactose be achievable at the filing date without undue burden over the whole range claimed. The board recalled that the requirements of sufficiency of disclosure were met if a person skilled in the art could carry out the invention as defined in the independent claims over the whole ambit of the claims without undue burden based on the disclosure in the patent application. The disclosure of one way of performing an invention was only sufficient if it allowed the invention to be performed over the whole range claimed. This principle applied to any invention, irrespective of how it was defined, be it by way of a functional feature or not. A functional definition was acceptable if all alternatives were available and achieved the desired result. For functional definitions of a technical feature, it had to be established whether or not the patent application disclosed a technical concept fit for generalisation which made the host of variants encompassed by the functional definition available to the skilled person. Sufficiency of disclosure had to be shown to exist at the effective date of the patent (priority date or date of filing), i.e. on the basis of the information in the patent application as a whole and taking into account the common general knowledge then available to the skilled person. A lack in this respect could not be remedied by post- published evidence (cf. G 1/03, point 2.5.3 of the Reasons). The board stated that overexpression of SetA in E. coli was one way of performing the claimed invention that was disclosed in the patent. However, claim 1 was not limited to the overexpression of SetA. While the patent mentioned SetB and SetC, it reported no data on these two proteins or any explanation, reasoning or technical basis. With respect to G 2/21, the board observed that G 2/21 held that "the term 'plausibility' [...] does not amount to a distinctive legal concept or a specific patent law requirement under the EPC", and that G 2/21 explicitly ruled on plausibility only in the context of Art. 56 EPC, distinguishing it from the context of Art. 83 EPC. Therefore, in the board's view nothing could be gained by the respondent (patent proprietor) by referring to plausibility in the given context. Moreover, contrary to the respondent's assertion, the opposition division did not find that "the patent specification already contains experimental evidence showing the plausibility of the claimed technical effect" but that the possibility that "... for all three setA, B, and C" was not "inherently implausible". The board held, however, that something not inherently implausible was not necessarily sufficiently disclosed. And the opposition division had not explained why it was not "inherently implausible". The skilled person wanting to perform the claimed invention had to test the Set family members including SetB and SetC with no guarantee that any of the tested proteins would work. In view of the case law summarised by the board, this amounted to an undue burden, even if it involved routine experimentation. In conclusion, there was no relevant guidance in the patent application and the common general knowledge on SET family proteins, except SetA. The patent application and the prior art did not demonstrate that any teaching shown in the patent on SetA could be extended to other SET family proteins, including SetB and SetC. The appellant was therefore under no obligation to provide further experimental evidence to support the insufficiency objection. The main request did not meet the requirements of sufficiency of disclosure. The lack of disclosure could not be remedied by post-published evidence. And the right to be heard did not entail the right to have post-published evidence considered.