From Board of Appeal 3.4.03 of the European Patent Office comes recent advice how the questions of sufficiency of disclosure, clarity of the claim language and (non)obviousness of the claimed subject matter shall be dealt with under the European Patent Convention - namely separately.
Below is the major issue underlying the Board’s decision (T 2001/12 of 29 Jan, 2015),
“and therefore it becomes possible to realize a memory device which can reduce the voltage for writing and erasing to approximately 70% or less of the program voltage of a conventional planar type device.”
that was mentioned in the description, but was not comprised in the examined independent claim. The Board thus asked the question whether the allegation that the claimed invention is incapable of achieving the mentioned effect, would, even if true, justify refusing the application for failure to meet the requirements of a sufficient disclosure. In order to answer this question, the Board took a detailed look into the EPO’s case law and ultimately concluded that it is:
“…the consistent position of the boards that an objection of insufficient disclosure … cannot legitimately be based on an argument that the application would not enable a skilled person to achieve a non-claimed technical effect.” (at point 3.4 of the Reasons)
According to the Board, the question of sufficiency shall apparently be considered separately from the question of clarity because the Board further opines that if the claims do not comprise a feature which is described in the application as essential or which is disclosed in the description as being indispensable for solving the problem defined in the application, then a lack of clarity objection may indeed arise (see point 4.2 of the Reasons).
The assessment of clarity does however not entail, and is independent of, a comparison of the claimed invention with the prior art, other than to determine whether there is consistency between the claims and the description in relation to the believed contribution of the claimed invention to the art as described in the application (see also point 4.2 of the Reasons).
Moreover, the Board emphasizes that the determination of the objective contribution of the claimed invention is also to be made separately. It is neither related to sufficiency nor to clarity, but forms part of the examination for obviousness (see point 4.3 of the Reasons).
Decision T 2001/12 is therefore a reminder to all practitioners acting before and in the European Patent Office that the patentability requirements of sufficiency, clarity and non-obviousness are separate requirements. This should actually be evident already from the fact these requirements are laid down in different Articles of the European Patent Convention. However, in real life the patent examination under the Convention sometimes merges these requirements. The decision reported herein clearly warns against such an approach.