EPO takes stance on sufficiency across entire scope of mechanical claims (T 0149/21)
The Technical Board of Appeal of the EPO has issued a decision, T 0149/21, on ‘whole range sufficiency’ applied to mechanical inventions. Whole range sufficiency is the requirement that a claim be sufficiently disclosed across its entire scope and is typically required in chemistry patents where claims often have a broad scope. This decision is important as it makes clear the requirement applies to other technical fields.
The decision resulted from an appeal filed by an opponent of European Patent No. 2630545, where the opponent appealed against the Opposition Division’s decision not to revoke the patent during opposition proceedings.
The patent in question related to a process for reducing energy consumption in mechanical rolling mill used to flatten sheets of metal. When the rolling mill experiences a malfunction during operation, a control system will calculate the expected duration of malfunction and shut down other components of the mill to save energy.
The claim contained two integers which the Technical Board of Appeal found problematic. The first integer related to the automatic identification of a malfunction, whereby the Technical Board of Appeal found the claim to cover both manual and automatic identification, the automatic identification having not been disclosed in the patent. The second integer related to the calculation of the shut-down time, whereby the claim covered calculating shut-down times for both known and unknown malfunctions, the calculation of unknown malfunctions having not been disclosed in the patent.
The patentee argued that it was not suitable to apply the standard of whole range sufficiency to mechanical inventions. They also made the argument that an improbable event such as a plane crashing into the rolling mill, or the detonation of a nuclear bomb, would be covered by the scope of the claims but would not be expected to be workable by the skilled person. In response, the Technical Board of Appeal made a distinction between embodiments falling within the scope of the claims that are ‘technically reasonable’ which the skilled person would objectively understand, and those which are merely ‘theoretically possible’ such as the patentee’s extreme examples. They found that it would be technically reasonable to teach the skilled person how to automatically identify a malfunction and consequently how to calculate the shut-down time of a previously unknown malfunction.
The Technical Board of Appeal found that although one way of operating the invention had been disclosed, which fulfilled the requirements of Rule 41(2)(e), it did not fulfil the requirements of Article 83 EPC, as a person skilled in the art would not be able to carry out the invention across the whole scope of the claim.
T 0149/21 (Walzwerkanlage/PRIMETALS) 04-07-2023 | Epo.org (Decision only available in German)
