5.3. Examples

Whether or not the disclosure of the patent in suit is sufficiently clear and complete within the meaning of Art. 100(b) and 83 EPC must be decided by appraising the information contained in the examples as well as other parts of the description in the light of the common general knowledge of the skilled person at the priority date (T 322/93 and T 524/01).

However, where the application disclosed the claimed invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, it then necessarily disclosed at least one way of carrying out the invention disclosed in accordance with R. 42(1)(e) EPC, with the necessary details being derivable from the description including the prior art referred to therein (see e.g. T 389/87, T 561/96 and T 990/07). The board in T 990/07 pointed out that in cases where examples were not indispensable, their omission did not contravene R. 27(1)(e) EPC 1973 (R. 42(1)(e) EPC). This rule only required the insertion of such examples "where appropriate". The jurisprudence of the boards of appeal thus drew a clear distinction between the concepts of "way of carrying out the invention claimed" and "examples" referred to in R. 27(1)(e) EPC 1973. According to this jurisprudence, the detailed description of one way of carrying out the invention claimed had to be interpreted in the light of Art. 83 EPC. It constituted a condition to be met by the description as a whole and was clearly mandatory. In contrast, the presence of examples would only be indispensable if the description would otherwise not be sufficient to meet this requirement. Hence, the purpose of the "examples" evoked in R. 27(1)(e) EPC 1973 appeared primarily to be to complete an otherwise incomplete teaching. See also T 1918/07, T 1169/08 and T 721/16, which state that examples did not need to be present in order to satisfy the requirement of sufficient disclosure).

In T 671/05 the board decided that the amount of technical detail needed for sufficient disclosure was a matter which depended on an assessment of the facts of each particular case, such as the character of the technical field and the actual technical detail disclosed.

As for the further objection of a lack of a specific embodiment, the case law has it that the detailed description of one way of carrying out the claimed invention had to be interpreted in the light of Art. 83 EPC. This constituted a condition to be met by the description as a whole. In contrast, the presence of examples would only be indispensable if the description would not otherwise be sufficient to meet this requirement (T 2794/17).

The board in T 698/18 stated that the application did not contain any embodiment corresponding to the claim's definition, but this alone could not justify the refusal of the application, since the purpose of the "examples" evoked in R. 27(1)(e) EPC 1973 appeared primarily to be to complete an otherwise incomplete teaching and that the application cannot be refused under this provision if the description is considered to describe, despite the [...] lack of examples actually embodying the invention, one way of carrying out the invention (T 990/07, Headnote and point 3 of the Reasons). The issue to be decided was whether the application was actually sufficiently complete, despite the absence of concrete embodiments, to allow the skilled person to carry out the claimed invention.

In T 226/85 (OJ 1988, 336), T 409/91 (OJ 1994, 653) and T 694/92 (OJ 1997, 408) the patent or the patent application disclosed only one or very few ways of carrying out the invention. In each of these decisions the boards had held that the disclosure of the specific examples was not sufficient to enable the invention to be carried out as claimed. However, according to T 617/07, no principle could be deduced from these decisions that sufficiency of disclosure is always to be denied if there is only example of carrying out an invention. Rather all three decisions emphasised that an objection of lack of sufficiency of disclosure (i) presupposes that there are serious doubts, substantiated by verifiable facts, and (ii) depends on the evidence available in each case whether or not a claimed invention can be considered as enabled on the basis of the disclosure of one worked example.

This approach was confirmed in the more recent decision T 360/18, which stated the following. As set out in T 617/07, sufficiency of disclosure is not always to be denied if there is only one example of carrying out an invention. Rather, an objection of lack of sufficient disclosure (i) presupposes that there are serious doubts, substantiated by verifiable facts, and (ii) depends on the evidence available. In the case at issue, the board was not presented with any verifiable facts that could support the respondent's (opponent's) arguments that the claimed invention could not be put into practice. Nor had the respondent furnished any evidence to refute the appellant's assertion that all the claimed embodiments were stable. The opposition division concluded that the results disclosed in the patent were to be considered contradictory, meaning that a person skilled in the art would have to undertake a research programme to work out for themselves which fibrinogen formulations out of a whole host of possible combinations of divalent metal ions and complexing agents had the desired stability. However, the board did not agree as there were no discernible inconsistencies in the data presented in the patent. Furthermore, the patent pointed to preferred embodiments that were to be considered in the event of any failures.

In T 721/16 the patent was revoked by the opposition division. The objection of lack of sufficiency of disclosure related to the measurement of parameters defining the polyvinylpyrrolidone powder compositions. The board stated that the difficulty in providing an exact repetition of the examples of the patent in suit was in the case in hand not decisive for concluding a lack of sufficiency of disclosure of the claimed invention and could be left unanswered. It is the sufficiency of disclosure of the combination of technical features of the invention, i.e. as defined by the terms of the claims (see R. 43(1) EPC), which has to be assessed and not that of the specific exemplified embodiments, which were not in the case in hand the subject-matter of a claim.

In T 1884/19 the appellant argued a lack of sufficiency of example 7 having regard to an alleged inconsistency between that example and comparative example 2. The board stated that it was however not explained why such an inconsistency would hinder the skilled person from repeating the example on the basis of its description. Furthermore, it was the sufficiency of disclosure of the combination of technical features of the invention, i.e. as defined by the terms of the claims (R. 43(1) EPC), which had to be assessed and not that of an exemplified embodiment, which was not in the present case the subject-matter of a claim. In the absence of any submission by the appellant as to why a lack of reproducibility concerning one example of the patent would result in an insufficient disclosure without addressing the teaching of the patent in suit as a whole, including its numerous additional examples, this argument did not convince either (about T 1884/19, see also below under chapter II.C.5.5.1a) "Essential parameters").

In T 2242/16 the appellant (patent proprietor) took the view, based on T 665/90, that proving the alleged lack of enablement would have required reproducing an example of the patent in exactly the same way. The board decided that there could be no such requirement in the case in hand, finding that, at least according to the patent's teaching, the precise approach taken in the example was not crucial. The board referred to a number of other decisions (T 740/90, T 406/91, T 1712/09) and to the established case law reported in chapter II.C.5.4. (see a summary of the findings of T 226/85 and T 2242/16 in T 956/21).

See also T 500/20 (chapter II.C.5.4 d) ) in the field of mechanical engineering, stating (Catchword and point 3.6 of the Reasons): in claimed inventions that do not involve a range of parameter values or compositions but are directed at a concept expressed in terms of generic structural or functional features of an apparatus or of a method, it is not enough to demonstrate insufficiency to conceive of an example that falls within the terms of the claim that does not work because it does not achieve the claimed effect fully or at all so that therefore the invention would not be sufficiently disclosed across the entire breadth of the claim.

Decision T 3178/19 provides an illustration of a case where one single example was not sufficient. The patent provided only one single example exhibiting all the claimed features. The respondent/proprietor cited T 226/85 to argue that one single example was sufficient, but the board was not convinced. Neither the specification nor the common general knowledge provided adequate instructions for leading the skilled person necessarily and directly towards success over the broad scope of the claim through the evaluation of initial failures or through an acceptable statistical expectation rate in case of random experiments. The opposed patent provided a number of examples for making a resistor with a sintered body from a mixture according to features (b), (c) and (j), but was silent about the specific manufacturing steps. The passages indicated by the respondent did not provide the missing information.