Sufficiency of disclosure

According to article 83 European Patent Convention (EPC): ‘The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.’ For the disclosure to be sufficient at least one way of carrying out the invention should be disclosed in the description such that it is apparent to the skilled person how to put the invention into practice. Lack of sufficiency is a ground for revocation of a European patent in opposition proceedings at the European Patent Office, and for invalidation by national courts.

Case Law, Chemical Engineering, Novelty, Sufficiency of disclosure, United Kingdom

(Bristows)/

The High Court dismissed Novartis’ claim for infringement of its EP(UK) patent for ophthalmically compatible extended wear contact lenses. Although Novartis established that the defendants’ product falls within certain claims of the patent, and successfully resisted Johnson & Johnson’s novelty and obviousness attacks, the patent was found invalid for insufficiency. The Court held it would…

Case Law, Novelty, Sufficiency of disclosure, United Kingdom

(Bristows)/

The High Court dismissed Novartis’ claim for infringement of its EP(UK) patent for ophthalmically compatible extended wear contact lenses. Although Novartis established that the defendants’ product falls within certain claims of the patent, and successfully resisted Johnson &Johnson’s novelty and obviousness attacks, the patent was found invalid for insufficiency. The Court held it would involve…

Biologics, Case Law, Sufficiency of disclosure, United Kingdom, Validity

(Bristows)/

The patent in suit contains claims for the (+)enantiomer of citalopram and a method for its resolution from the racemate (the diol method). The Defendants appealed a decision of the Court of Appeal arguing that the patent was insufficient because it effectively claimed the (+)enantiomer made by any method whereas the specification only disclosed two…

Amendments, Case Law, Industrial application, Inventive step, Mechanical Engineering, Poland, Sufficiency of disclosure

(Allen & Overy)/

In this case the Court holds that documents and explanations relating to a patent application should be corrected or changed at the request of the Polish Patent Office within a fixed time period and under penalty of discontinuation of the proceedings. A faulty application and non-compliance with such requests may result in the refusal to…

Biologics, Case Law, EPC, Sufficiency of disclosure

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The degree of effectiveness of the invention (here: the removal of prion proteins) is an issue related to the technical problem solved by the invention. This is to be considered when assessing inventive step, and is thus not relevant for sufficiency of disclosure. As the invention is sufficiently disclosed in the specification, the fact that…