1.3.3 Implicit disclosure

Subject-matter which is implicitly disclosed to the skilled person, using common general knowledge, in the application as filed is part of its content (see G 2/10, OJ 2012, 376). As pointed out in T 860/00, the disclosure implicit in the patent application – i.e. what any person skilled in the art would consider was necessarily implied by the patent application as a whole (e.g. in view of basic scientific laws) – is relevant for the requirements of Art. 123(2) EPC 1973 (see also e.g. T 947/05, T 1772/06, T 1041/07, T 1125/07, T 2541/11, T 2273/12, T 389/13, T 2267/14).

It is essential to identify the actual teaching conveyed by the original disclosure. This approach might lead to the identification of subject-matter which has not been explicitly revealed as such in the application as filed, but nevertheless derives directly and unambiguously from its content. Literal support is not required by Art. 123(2) EPC (see e.g. T 667/08, T 1728/12, T 801/13, T 640/14). See also T 2177/11, referring to T 667/08, and holding that the expression "configured to" was equivalent to the expression it replaced, "capable of", in the context of the invention.

In T 823/96 the board observed that the term "implicit disclosure" should not be construed to mean matter that does not belong to the content of the technical information provided by a document but may be rendered obvious on the basis of that content. The term "implicit disclosure" relates solely to matter which is not explicitly mentioned, but is a clear and unambiguous consequence of what is explicitly mentioned (see also e.g. T 1125/07, T 1673/08, T 583/09, T 2016/11, T 49/13; for cases delimiting implicit subject-matter from merely obvious subject-matter, see also in this chapter II.E.1.3.4 a)).

In T 1107/06, in which the original general disclosure taught the use of a substance in the treatment of excessive cholinergic controlled or influenced secretions, the board took the view that when there is a generic disclosure of the invention together with a specific disclosure of an illustrative or preferred embodiment (here treatment of excessive sweating and lacrimation) falling under the generic disclosure, it would normally be implicit for the skilled person that all the other embodiments comprised in the generic disclosure without being mentioned specifically also form part of the invention. See however also below in this chapter II.E.1.6. on selection inventions and II.E.1.10. "Specific derived from generic".

In T 917/94 the board decided that the omission of a feature of a claim did not contravene Art. 123(2) EPC 1973, if this feature was implicitly defined by two other features and, being therefore redundant, its omission created no subject‑matter extending beyond that of the application as filed.

In T 1171/08 the respondent (patent proprietor) submitted that there had been no inadmissible extension, if only because all the conditions needed to achieve selective COS removal were implicitly included in the claim by virtue of the indication of purpose. The board found that indicating the purpose as a functional feature in a use claim limited the claim to those embodiments whereby the purpose could be achieved. Only to that extent could the indication of purpose implicitly comprise features essential to achieving the desired selectivity. By no means, however, could the indication substitute the essential features specifically disclosed in that connection in an application. In the end, the board held that the skilled person could not derive the new combination of features directly and unambiguously from the application as filed.

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