Posted: July 23rd, 2019
Art 83 EPC (= sufficiency of disclosure) before the German Courts and the EPO: (still) no harmonization, by Dr. Hans-Peter Felgenhauer (Former Technical Member of the Boards of Appeal) and Dr. Tobias Wuttke (Meissner Bolte)
In the recently published decision of the German Supreme Court dated 8 January 2019 (docket no. X ZR 58/17), it was decided that the European patent EP 1 070 223 (“patent in dispute”) discloses the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (= Art 138 (1) b) EPC). This finding might likely have been different if the patent in dispute had not been challenged with a nullity action but with opposition proceedings at the EPO.
Facts and Findings of the Case
The subject matter of claim 1 of the patent in dispute was directed to an “apparatus for drying particulate material in super-heated steam” comprising i.a. “a dust separation cyclone (8) located in the upper cylindrical part for receiving steam and dust and for separating the dust from the steam”.
The features of claim 1 of the patent in dispute considered as crucial for the sufficiency of disclosure (= Art 138 (1) b) EPC) were:
F 5. a dust separation cyclone (8) located in the upper cylindrical part for receiving steam and dust and for separating the dust from the steam, and the (characterizing) features
F 5.1 the dust separating cyclone (8) has openings (14) in the upper part thereof for receiving at least a half part of the steam and dust therefrom, and
F 5.2 that the residual steam and dust, if any, is fed to the cyclone (8) from below.
The German Supreme Court held that the understanding of the Federal Patents Court with a view of the interpretation of these features was correct. Reference to “at least a half part” in feature 5.1 was considered as referring to the half of the entire amount of steam and dust received by the dust separating cyclone. In that respect it was added that according to the invention it is intended to supply as much steam and dust as possible via the upper openings.
The possibility according to feature 5.2, according to which up to the half of the residual steam and dust can be fed to the cyclone from below, was considered as defining no other teaching than the one resulting from feature 5.1.
It was stated that by means of these both features the patent in dispute determines, that at least half of the steam and dust has to be fed from above and that this portion can encompass the entire volume, wherein the residual steam and dust can be fed from below, in case the entire volume of steam and dust is not fed from above.
Claim 3, according to which the dust separating cyclone (8) receives part of the steam and dust at a lower part thereof was voluntarily deleted by the patentee. Consequently, sufficiency of disclosure with respect to claim 3 needed not to be considered by the German Supreme Court.
Examination of the sufficiency of the disclosure
Concerning the requirement of a sufficiently clear and complete disclosure of the invention in the decision of the German Supreme Court it is stated that a sufficient disclosure is given if the skilled person is, without having to be inventive and without undue burden, capable to carry out the teaching of the claim based on the complete disclosure of the patent including the description and the drawings, in combination with the general technical knowledge at the application or priority date, in a manner such that the success aimed for is achieved (in that respect it was referred by the German Supreme Court to its previous decision X ZR 168/97).
With a view to the case to be decided it was indicated that these requirements were met, since one preferred embodiment of the patent in dispute showed how an apparatus for drying particulate material in super-heated steam is to be designed according to the claimed features. This embodiment corresponds likewise to features 5.1 and 5.2 in that the dust containing steam is entirely fed via the openings in the upper part of the dust separation cyclone. The variation according to feature 5.2 does, in so far, not relate to a different teaching.
With respect to sufficiency of disclosure it thus suffices to show by one embodiment of the patent in dispute an apparatus, according to which dust containing steam is entirely fed from above.
According to this finding of the German Supreme Court the possibility clearly defined by feature 5.2, that the residual steam and dust, if any, is fed to the cyclone (8) from below, has been disregarded with regard to the question, whether or not such a feeding from below is sufficiently disclosed.
This result is standard German case law, since it suffices to present one embodiment in the description pursuant to which the invention can be carried out.
Jurisprudence of the Boards of Appeal of the European Patent Office as referred to in decisions T1223/15 and T2007/16
According to the established jurisprudence of the Boards of Appeal of the European Patent Office as referred to in the decision T1223/15 of 5 February 2019 “an invention is in principle sufficiently disclosed if at least one way is clearly indicated, enabling the person skilled in the art to carry out the invention”, see Case Law of the Boards of Appeal, 8th. Edition 2016 (CLBA), II.C.4.2. Insofar, German and EPO practices are consistent.
However, under the EPO practice, it is necessary but not sufficient to meet this requirement in order to meet the requirements of Art 83 EPC (= Art 138 (1) b) EPC). According to governing EPO practice, it is further required that this one way to carry out the invention allows the invention to be performed in the whole range claimed, see CLBA II.C.4.4.
According to the decision T1223/15 “for assessing the second condition, that the above disclosure allows the invention to be performed in the whole range claimed, it must first be ascertained what the scope of the claimed range is. The latter involves in the present case an issue of claim interpretation.
“In particular, that pursuant to established case law, the skilled person,
when considering a claim, should rule out interpretations which do not make technical sense, and should try to arrive at an interpretation of the claim that takes into account the whole disclosure of the patent, see CLBA, II.A.6.1”.
Comparison: EPO and German practise
The approach of this decision of the Board T1223/15 thus differs from the one of the decision X ZR 58/17 of the German Supreme Court, in that, in addition to the disclosure of at least one way enabling the person skilled in the art to carry out the invention (first requirement), it is also required that the invention can be performed in the whole range claimed (second requirement).
In relation to the case decided by the German Supreme Court it appears that, following the approach taken by the Board, it might have been necessary to examine whether feature 5.2 according to which the residual steam and dust, if any, is fed to the cyclone (8) from below relates indeed to the same teaching as feature 5.1.
In other words, according to the approach taken by the Board it possibly could have been required in the assessment of the understanding of the subject-matter of claim 1, to examine whether or not the possibility to feed the cyclone from below referred to in feature 5.2 distinguishes this approach (teaching) from the one according to feature 5.1 taking due account of the fact, that according to features 5.1, 5.2 residual steam can, but need not necessarily, occur.
Concerning the possible effect of the deletion of claim 3 on the question of sufficiency of disclosure it is referred to the decision T2007/16 of 15 February 2019 in which it is stated, that contrary to the opinion of the opposition division, a dependent claim directed at a particular embodiment can give rise to an objection under Article 83 EPC if the skilled person does not know how to obtain this embodiment. Also, a dependent claim directed at subject-matter that the skilled person would not know how to obtain indicates that the invention defined in the corresponding independent claim is not sufficiently disclosed over the whole domain encompassed by the claim.
The practical consequence of the above described differences of EPO and German practice on the interpretation of Art 83 EPC (= Art 138 (1) b) EPC) is that opposition proceedings before the EPO should be considered in case that such ground for revocation is relied upon.
As confirmed by statistics, such ground for revocation plays an important role before the EPO whereas it is of minor importance before the German courts which do not recognize the requirement that the “one way, enabling the person skilled in the art to carry out the invention is only sufficient if it allows the invention to be performed in the whole range claimed.”
Given the fact that opposition proceedings are much cheaper than German nullity action, opposition proceedings are the “preferred choice” if patents should be challenged on the grounds “insufficiency of disclosure” and “added subject matter” (= Art 123 (2) EPC), since also here the EPO standards are stricter than the German ones.
A copy of the decision (in German) can be read here.