3. Parts of the application relevant for assessing sufficiency of disclosure
3.1. Application as a whole
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 January 1990 date: 1990-01-16, 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). See also T 1253/04 (point 10 of the Reasons).
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.
In T 797/14 the board came to the conclusion that the essential element of the claimed invention, namely the coating composition Flurotec (TM), was not of public knowledge and that there was also not enough information available to the skilled person for him to reliably determine the composition or structure of the product. The counterpart of a monopoly by a patent is however the disclosure of the invention, in particular of its essential elements, and not the provision or use of a commercial product whose structure and composition are not public. (On disclosure of a starting material, see T 1596/16, in which one of the parties had invoked T 2399/10 and T 797/14 but the board, having summarised the issues dealt with in those decisions, found that the case in hand was not comparable.)
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, see Catchword).
In T 1170/20 the board noted, in reply to an argument raised by the respondent (patent proprietor), that the requirement for sufficiency of disclosure related to the invention as a whole, not just the part that the applicant or patent proprietor deemed inventive. If any part of the invention defined in the claims could not be carried out, then the invention could be challenged for insufficient disclosure.
The following recent decisions are cited by way of example to illustrate the interaction between the requirements of Art. 83 EPC and the claim interpretation rules: T 2824/19, T 1902/21 and T 2020/22, the latter highlighting how taking the patent application as a whole into account, as explicitly stipulated by Art. 83 EPC, can have a bearing on the correct interpretation of the claims (T 2020/22, point 2.3 of the Reasons).
- T 1396/23
In T 1396/23 the appeal was filed by the opponent against the opposition division's decision rejecting the opposition. The appellant contested the opposition division's finding that the invention defined in claim 1 of the opposed patent was sufficiently disclosed. While the appellant did not dispute that claim 1 related to a medical use and was drafted as per Art. 54(5) EPC, it argued that the effect induced by whey protein micelle complexes (WPM complexes) described in the opposed patent was not therapeutic. According to the appellant, the claimed complexes provided nutrition but were unsuitable to prevent the claimed conditions, even less so to treat them.
The board was not persuaded by the arguments of the appellant. The board referred to the opposed patent, which explained that, prior to the filing date, whey protein isolates were considered not only to be essential nutrients but also to be beneficial in reducing the risk of, and treating, metabolic diseases associated with high-fat diets and/or elevated postprandial insulin levels, such as diabetes. On this basis alone, the board found it reasonable to assume that the claimed WPM complexes, which contained whey proteins, could likewise induce these effects..
The board observed that the opposed patent taught that using the claimed WPM complexes rather than conventional whey proteins was beneficial for subjects who were at risk of or suffered from the diseases indicated in claim 1. The board explained that it was immaterial what the underlying mechanism of action was, and also whether the complexes acted on a specific target and whether a comparator such as whey protein isolate or uncomplexed WPM was explicitly mentioned in claim 1. The skilled person would appreciate that the claimed WPM complexes were intended to be incorporated into a nutritional composition in place of whey proteins in order to achieve the stated therapeutic effect. The board concluded that, in the context of the invention, the claimed compositions comprising WPM complexes could thus be regarded as "a substance or composition" within the meaning of Art. 54(5) EPC that was used to carry out the claimed therapeutic method.