7.1.2 One way of implementing invention over whole scope of claim

For sufficiency of disclosure (Art. 100(b) and 83 EPC), the board has to be satisfied firstly that the patent specification certainly puts the skilled person in possession of at least one way of putting the claimed invention into practice, and secondly that the skilled person can put the invention into practice over the whole scope of the claim. If the board is not satisfied on the first point that one way exists, the second point need not be considered (T 792/00, Catchword).

Other example decisions related to this principle: T 811/01, T 1241/03, T 364/06; see also T 1727/12 on the notion of "Biogen sufficiency" and T 1845/14, in which the board confirmed that, as indicated in T 1727/12, "so-called Biogen insufficiency" is not part of the established case law of the boards of appeal.

The scope of the patent should be justified by the technical contribution to the art (T 612/92, repeated again in T 2038/19 with reference to T 435/91 (OJ 1995, 188)). The necessary extent of disclosure is assessed on a case-by-case basis having regard to the essence of the invention (T 694/92, OJ 1997, 408). Whether the disclosure of one way of performing the invention is sufficient to enable a person skilled in the art to carry out the invention over the whole claimed range is a question of fact that must be answered on the basis of the available evidence, and on the balance of probabilities in each individual case (T 2038/19).

In T 292/85 (OJ 1989, 275) the invention at issue concerned a recombinant plasmid comprising a homologous regulon, heterologous DNA and one or more termination codons for expression in bacteria of a functional heterologous polypeptide in recoverable form. The application was refused by the examining division on the grounds that not all embodiments falling within the broad functional wording of the claims were available. The board, however, held that the non-availability of some particular variants was immaterial as long as there were suitable variants known which provided the same effect.

According to T 740/90, which summarises the findings of T 292/85, decision T 292/85 related to an invention of which one component defined in functional terms was such that either some particular variants were unavailable or some unspecified variants were unsuitable. The board held that the disclosure was sufficient since the skilled person was aware, owing to the disclosure of the invention or the common general knowledge in their field, of appropriate variants that produced the same effect for the invention. The board in T 292/85 also stated, however, that the disclosure did not need to include specific instructions on how to obtain all possible component variants within the functional definition. The invention in T 740/90 was defined by parameters, not in functional terms. It was thus defined clearly, and the only possible variants were at the level of the necessary starting materials for preparing the yeasts covered by the claim. The EPC did not stipulate that various ways of performing the invention had to be described (R. 27(1)(e) EPC). All that mattered in the context of Art. 83 EPC was whether the description included one way of preparing a yeast as described in the claim that a person skilled in the art could reproduce.

Similarly, in T 386/94 (OJ 1996, 658) the patent specification provided a technically detailed example for the expression of preprochymosin and its maturation forms in E. coli. It suggested the possibility of expressing these proteins in micro-organisms in general. The board held that the invention was sufficiently disclosed because one way to carry out the invention was clearly indicated and the state of the art contained no evidence that foreign genes could not be expressed in organisms other than E. coli. The principles set out in T 292/85 (OJ 1989, 275) were also applied in T 984/00 (where the invention lay in the use of the T-region of the Agrobacterium without the genes of the T-region of wild type Ti-plasmids to avoid the deleterious effects of these genes on the target plant) and in T 309/06 (where the appellant had disclosed a novel group of enzymes characterised by useful properties and the board allowed the appellant to claim the enzymes independently of their origin).

As for the amount of detail needed for a sufficient disclosure, this depends on the correlation of the facts of the case to certain general parameters, such as the character of the technical field and the average amount of effort necessary to put into practice a certain written disclosure in that technical field, the time when the disclosure was presented to the public and the corresponding common general knowledge, and the amount of reliable technical details disclosed in a document (see T 158/91; T 694/92, OJ 1997, 408; T 639/95; T 36/00; T 1466/05; T 2220/14).

As noted in T 2172/15, sufficiency of disclosure presupposes that the skilled person is able to obtain substantially all embodiments falling within the ambit of a claim. This principle applies to any invention irrespective of the way in which it is defined, be it by way of a functional feature or not. In T 2172/15, under another line of argument, the respondent (proprietor) submitted that the case law in relation to generic claims had established that not every embodiment or variant covered by a generic group of compounds had to be assessed for enablement. Rather, the provision of a concept fit for generalisation in the patent was the decisive issue to be taken into account. The board stated that claim 1 was not limited to a set of compounds or a generic group of compounds to be used in a dark extension step, but explicitly mentioned the use of a single nucleotide monomer having certain functional properties, including the ability to pair with three types of nucleotides. However, such a monomer was neither disclosed in any of the available documents including the patent, nor was a teaching for its production. Thus, contrary to the respondent's (patent proprietor's) view, there was no concept fit for generalisation.

See also in this chapter II.C.5.4.