Article 83 of the European Patent Convention

European Patent Convention

The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...

 (EPC) relates to the disclosure of the invention under the European Patent Convention. It prescribes that a European patent application

Patent application

A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...

 must disclose the invention (which is the subject of the European patent application) in a manner sufficiently clear and complete

Sufficiency of disclosure

Most patent law systems require that a patent application disclose a claimed invention in sufficient detail for the notional person skilled in the art to carry out that claimed invention. This requirement is often known as sufficiency of disclosure or enablement, depending on the...

 for it to be carried out by a person skilled in the art.

In order to meet the requirements of Article 83 EPC, a European patent application must therefore contain sufficient information to allow a person skilled in the art, using his common general knowledge, to perceive the technical teaching inherent in the claim

Claim (patent)

Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...

ed invention and to put it into effect accordingly. In other words, the disclosure of the invention must be reproducible without undue burden. This requirement must be complied with as from the date of filing because a deficiency in a European patent application as filed, consisting in an insufficient identification of the subject-matter claimed, cannot subsequently be cured without offending against Article 123(2) EPC which provides that the subject-matter content of a European patent application as filed may not be extended

Amendments under the European Patent Convention

Article 123 of the European Patent Convention relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable...

.

An insufficiently clear and complete disclosure of the invention is a ground of opposition

Opposition procedure before the European Patent Office

The opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...

, and revocation.

Article 83 EPC and the generally accepted laws of physics

Although the European Patent Convention does not exclude the patenting of "revolutionary" inventions,

Burden of proof in opposition

The burden of proof generally lies upon an opponent to establish insufficiency of disclosure. However, "when the patent does not give any information of how a feature of the invention can be put into practice" and if the opponent plausibly argues that "common general knowledge would not enable the skilled person to put this feature into practice", the burden of proof can be shifted to the patentee to show that "common general knowledge would indeed enable the skilled person to carry out the invention."

Relationship between Article 83 and 84 EPC

Depending upon the circumstances, an ambiguity in the claims

Claims under the European Patent Convention

Article 84 of the European Patent Convention defines the function of the claims under the European Patent Convention, the function being to define the matter, i.e. the invention, for which patent protection is sought. This legal provision also imposes that the claims must be clear, concise as well...

 (i.e. a lack of clarity under ) may very well lead to an insufficiency objection. As held in decision T 608/07 of 27 April 2009 (in opposition appeal proceedings),

"[it] should be born in mind that [such an] ambiguity also relates to the scope of the claims, ie Article 84 EPC. Since, however, Article 84 EPC is in itself not a ground of opposition, care has to be taken that an insufficiency objection arising out of an ambiguity is not merely a hidden objection under Article 84 EPC. (...) [For] an insufficiency arising out of ambiguity it is not enough to show that an ambiguity exists, eg at the edges of the claims. It will normally be necessary to show that the ambiguity deprives the person skilled in the art of the promise of the invention. It goes without saying that this delicate balance between Article 83 and 84 EPC has to be assessed on the merits of each individual case."

Implementing regulations, especially Rule 42 EPC

specifies the content of the description of a European patent application and constitutes an implementing rule of Article 83 EPC. Rule 42(1)(e) EPC (previously ) notably specifies that "[the] description shall ... describe in detail at least one way of carrying out the invention claimed, using examples where appropriate and referring to the drawings, if any." In that respect,

"[the] jurisprudence of the boards of appeal

Appeal procedure before the European Patent Office

Decisions of the first instances of the European Patent Office can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure , as opposed to an administrative procedure. These boards act as the final instances in the granting and opposition procedures before the...

draws a clear distinction between the concepts of "way of carrying out the invention claimed" and "examples" referred to in []. ... the detailed description of one way of carrying out the invention claimed has to be interpreted in the light of Article 83 EPC. It constitutes a condition to be met by the description as a whole and is clearly mandatory. In contrast, the presence of examples would only be indispensable if the description would otherwise not be sufficient to meet this requirement. Hence, the purpose of the "examples" evoked in [Rule 42(1)(e) EPC] appears primarily to be to complete an otherwise incomplete teaching."

Further reading

: Sufficiency of disclosure: Art. 83 vs. Art. 123(2): Insufficient disclosure: Lack of support vs. insufficient disclosure: Insufficient disclosure of the invention, in opposition proceedings: Sufficiency of disclosure