Sufficiently suitable

My good friend Lionel Vial’s brand new website is up and running! And in order to celebrate, Lionel kindly sent me another contribution on the appraisal of sufficiency of disclosure of functional claims. He writes:

In our previous post regarding the sufficiency of disclosure requirement applied to therapeutic purpose-limited product claims when there is a doubt that the therapeutic effect is attained, Renaud wondered if the bar had been raised.

Well, the decision discussed today might be just another hint that there is indeed a trend towards a wider application of the requirement of achievement of the claimed technical effect by the Boards of appeal of the EPO in regard of sufficiency of disclosure.

Decision T 528/11 was rendered on November 19, 2015 on an appeal formed by the opponent (appellant) against the decision of the opposition division to uphold European patent No. EP 1427808.

Claim 1 of the main request filed during the appeal proceedings read:

An isolated bacterial strain of the genus Lactobacillus characterized by that it is selected from the group consisting of the strain of Lactobacillus casei subsp rhamnosus, LN 113, deposited under number LMG P-20562, and the strain of Lactobacillus fermentum, LN 99, deposited under number LMG P-20561, and having the ability to colonise and become established in a human vagina, displaying a disturbed vaginal flora of microorganisms, upon vaginal administration, even during menstrual discharge, wherein said bacterial strain or strains is/are considered established if the bacterial strain or strains is/are still present in the vagina after at least two menstrual cycles from the time of administration, said strains were deposited at Belgian Coordinated Collections of Microorganisms on 14 June 2001 (emphasis added).

Among other arguments, the appellant submitted that although the deposit of strains LN 99 and LN 113 ensured their availability, this did not guarantee that they fulfilled the functional feature required by claim 1 (underlined above). None of the examples of the patent showed that the deposited strains indeed had this feature, which was necessary in order to meet the requirements of Article 83 EPC. The in vivo assay, required to reliably determine whether the strains had the alleged feature, was not described in the prior art. Post-published document D13 could not be used to prove sufficiency of disclosure. The functional feature that strains LN 99 and LN 113 were required to exhibit was not reproducible. Thus, according to decision G 1/03 (OJ EPO 2004, page 413), there was a lack of sufficiency of disclosure (see point XI of the Summary of Facts and Submissions).

If the Board did not share the same appreciation of the facts and arrived at the conclusion that the claimed invention was sufficiently disclosed (see points 10-14 of the Reasons), it nevertheless followed the appellant’s view as to the application of the requirement of sufficiency of disclosure to the feature at stake:

According to decision G 1/03 (supra), “(i)f an effect is expressed in a claim [and is not achieved by the claimed subject-matter; added by the board], there is lack of sufficient disclosure. Otherwise, i.e. if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step” (cf. G 1/03, supra, point 2.5.2 of the Reasons).

In line therewith, the claimed strains LN 99 and LN 113 must have the functional feature cited in claim 1. Otherwise, there is lack of sufficient disclosure (point 9 of the Reasons).

This famous obiter dictum of the Enlarged Board of Appeal is an enlightening reminder of the principles underlying the interplay between insufficiency of disclosure (as in decision T 609/02) and lack of inventive step (as in decision T 939/92) when there is a doubt that an effect is achieved.

Attaining the technical effect - always vital!
Attaining the technical effect – always vital!

However, in our opinion the present decision marks an evolution in the application of this sufficiency of disclosure principle to product claims.

Indeed, following decision T 609/02, this principle was mainly applied to a particular subset of product claims, the therapeutic purpose-limited product claims (“Product X for use in the treatment of Y”), i.e. so-called medical use claims, which are in fact hybrid between product and use claims. For these claims, attaining the claimed therapeutic effect is a functional technical feature of the claim.

In the present case, what the board refers to as a functional feature (underlined above) is generally considered to merely define a suitable use of the claimed bacterial strain, as can be construed from the tell-tale expression “having the ability to”. In fact, it is clear, e.g. from the Guidelines for Examination in the EPO (F-IV, 4.13) that such features are usually not considered as true functional features like those of medical use claims:

Similarly, a claim to a substance or composition for a particular use should be construed as meaning a substance or composition which is in fact suitable for the stated use; a known product which prima facie is the same as the substance or composition defined in the claim, but which is in a form which would render it unsuitable for the stated use, would not deprive the claim of novelty. However, if the known product is in a form in which it is in fact suitable for the stated use, though it has never been described for that use, it would deprive the claim of novelty. An exception to this general principle of interpretation is where the claim is to a known substance or composition for use in a surgical, therapeutic or diagnostic method (see G‑II, 4.2).

In contrast to an apparatus or product claim, in case of a method claim commencing with such words as: “Method for remelting galvanic layers” the part “for remelting …” should not be understood as meaning that the process is merely suitable for remelting galvanic layers, but rather as a functional feature concerning the remelting of galvanic layers and, hence, defining one of the method steps of the claimed method (see T 848/93).

Accordingly, the Board’s finding extends the scope of application of this sufficiency of disclosure requirement for product claims outside the field of medical use claims to which it was confined. Should this decision be followed, the requirement of achievement of the recited technical effect could thus expand to just about any technical field provided the product claim considered recites that a feature is suitable for attaining an effect.

Given the feeble gain in terms of patentability offered by “suitable for” features, in contrast to non-functional features, their usefulness could in the future very well be outweighed by the risk they impart to the claims containing them. Accordingly, drafters should be cautious when incorporating them in a claim. As for opponents, well, it is a promising new field to explore.

Lionel, I do hope you are right. It would probably be a good idea for the EPO to look more closely at the sufficiency of disclosure of functionally-drafted claims – in all fields of technology.

I personally tend to think that “suitable for“-type functional features can be powerful weapons in the hands of patent owners. In practice, it can be quite difficult for an opponent to demonstrate with absolute certainty that a prior art product is “suitable for” a certain purpose not explicitly stated in the prior art disclosure. The patent proprietor simply needs to cast enough doubts on the nature of the prior art product (based on the necessary incompleteness of the disclosure), which is easier than having to positively demonstrate something. And once novelty is acknowledged, inventive step generally follows since the problem-and-solution approach requires some explicit motivation in the prior art, which will often be missing assuming that the claimed purpose is not explicitly recited.

As all Spider-Man fans know very well,

With great power comes great responsibility.

Therefore, it is certainly appropriate for the Boards of Appeal to very carefully check whether there is sufficient information in the patent (and not merely in post-published evidence) for carrying out the claimed functional feature – or any unclaimed technical effect relied upon for arguing inventive step, for that matter. Otherwise, it is simply too easy for deep-pocketed firms to preempt future technological developments by skillfully drafting and then prematurely filing many patent applications directed to potential future inventions that have not yet been actually carried out. I have come across a significant number of such “paper” patents in the past few years, and they may be a symptom that it is indeed time to raise the bar for real.

CASE REFERENCE: Board of Appeal 3.3.08, T 528/11SCA Hygiene Products AB v. Ellen Aktienbolag, November 19, 2015.

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