9.3. Objection of insufficient disclosure rejected – examples

The established case law of the boards of appeal is that a finding of lack of sufficient disclosure presupposes serious doubts, substantiated by verifiable facts. The facts put forward by the examining division in ex parte case T 1020/11 to justify a finding of lack of sufficient disclosure were based on a potential problem which might occur between different antigens in combination. There were however no verifiable facts on file that demonstrated that interference was a problem in the present, specific case. In the absence of such verifiable facts relevant to the specific case, the board could not find the objection of lack of sufficient disclosure persuasive (see also inter partes case T 872/13 concerning a pharmaceutical composition) – the opponent described a number of possible difficulties that the skilled person might encounter, but did not raise any serious doubts substantiated by verifiable facts – in this case the skilled person was in a position to modify the method of Example 8 in order to obtain the desired result – routine modifications).

T 1437/07 (Botulinum toxin for treating smooth muscle spasm) dealt with the objection that it was not credible that the therapeutic effect could be achieved because the treatment disclosed in Example 9 had not actually been carried out. The board referred inter alia to R. 42(1)(e) EPC, according to which not even the presence of an example was mandatory. Therefore, just because a patent disclosed an effect which had not in reality been achieved, there was no reason – in the absence of convincing evidence that the effect could not be achieved – for the board to doubt that the effect could be achieved. The board rejected the objection.

As proof that an invention has been insufficiently disclosed, the boards require that the attempt to repeat it must fail despite following the conditions given in the examples. This requirement is not fulfilled where the opponent repeats the patented process under conditions covered by claim 1 but differing in many respects from those applying in the contested patent's examples (T 665/90).

An invention should be reproduced using the examples given. Insufficiency cannot be proven on the basis of laboratory trials when the only embodiment exemplified in the patent is an industrial fermentation process (T 740/90, Active dry baker's yeast). The conditions described in the patent for carrying out the invention were industrial conditions, not laboratory conditions as implemented by Mr L (affidavit submitted by the opponent-respondent). The appellant convinced the board that the scale of the tests had a non-negligible impact on how the method parameters were controlled and thus on the features of the dry yeast obtained. Even though this scale had not been stated as being decisive for achieving the desired object, it still held true that the only embodiment example in the patent had been carried out on an industrial scale, so the respondent, seeking to prove that the invention was not reproducible, should have used the same conditions as in the available example. Since Mr L's test had not been carried out on the same scale, it could not be considered valid for this reason alone, regardless of the other disputed points on the test conditions. The respondent, bearing the burden of proof, had failed to demonstrate that the invention had not been described in a manner sufficiently clear and complete.

The disclosure was also considered sufficient where the opponent had only used equivalents of the surfactants given in the patent, as he had not discharged his burden of proof (T 406/91).

In T 1712/09, the board held that the opponent had failed to prove that the method of measuring the parameters was unworkable. The tests referred to in its experimental reports had been carried out using measuring apparatus different from that described in the patent, and so not as instructed there. The board found that no attempt had been made to reproduce the invention (no attempt at calibration), which was the first condition for an objection under Art. 100(b) and 83 EPC. It cited T 815/07 (need for consistent values) and T 1062/98 and T 485/00 (possibility of calibrating methods of determining the relevant parameters). The board in T 548/13 held that the case law on parameters (which included T 815/07) did not apply since the case before it did not concern a quantitative parameter.

In T 45/09 too, the opponent's test conditions were called into question since the tests had been carried out using a commercially available product. Observing that two products of the same brand but available on the market at different times would not necessarily have the same properties, the board found that it had not been established that the properties had been the same in this specific case. The board also considered the issue of calibrating the method of measuring the parameter. The board concluded that the opponent had failed to show that the method of measuring the parameter could not be reproduced and thus to prove insufficient disclosure. It was, indeed, for the opponent to do so, and it could have discharged its burden of proof by attempting to reproduce the method using at least one of the claimed silica.

In T 378/11 (particle size), the values disclosed in claim 1 referred to the average particle size. No proof had been submitted by the appellants/opponents that the lack of any indication as to the precise kind of average particle size hindered the skilled person from carrying out the invention at issue. The board found that the skilled person could select those kinds of mean values falling within the range 10-500 mym in order to prepare a composition according to the invention at issue. Whether or not the use of two kinds of mean values would lead to different results was a matter of clarity, rather than sufficiency of disclosure.

In T 1089/15 the board, recalling the established case law on a successful objection (e.g. T 19/90 OJ 1990, 476, point 3.3 of the Reasons), found that the appellant (opponent) had not filed any evidence in support of its case and relied in its arguments on mere allegation. At the oral proceedings too, the appellant had merely referred to its written submissions, and thereby chosen not to submit arguments countering the position expressed by the board in the communication (Art. 15(1) RPBA) sent in preparation for those oral proceedings.

In case T 1863/21 the patent's examples were particularly relevant for assessing sufficiency of disclosure. The board considered that the invention as disclosed could be accepted as sufficiently disclosed. To support the argument that the invention was sufficiently disclosed over the whole scope, the patent proprietor filed additional experimental data (D15); the appellant (opponent) filed D15a two days before oral proceedings before the opposition division, in which the data in D15 were statistically analysised. The appellant did not criticise the test set-up used in the patent. It even conceded that the results in the patent's examples might show an effect. However, the appellant alleged that the result was not achieved over the entire scope of claims 1 and 2. The appellant did not provide its own experimental data in order to argue this point. Instead, its only line of argument on this aspect was based on a statistical analysis of the results shown in the figure of D15. The board concluded that even if one were to follow the appellant's conclusion that the results in D15 were indeed not statistically relevant, such a conclusion would not be decisive in changing the board's assessment on sufficiency of disclosure. The appellant would have had to raise serious doubt that the invention was not sufficiently disclosed over the entire scope. Under the circumstances of the present case, and in view of the patent's examples, the appellant's finding on the statistical relevance of the data in D15 was not sufficient to raise doubt that could be qualified as serious. The board made some remarks about convincing evidence and statistical analysis (see points 3.8 and 3.9 of the Reasons, and chapter III.G.4.2.3a)).