Shining the light on insufficiency (T 1285/15)

One of the arguments heard again and again during opposition is that an Opponent's insufficiency objection is merely a dressed-up clarity objection. The distinction is crucial, given that insufficiency is ground for opposing a patent whilst clarity is not (unless the clarity issues results from a post-grant amendment). In a recent case from the Boards of Appeal (T 1285/15), the Opponent attempted to circumvent the issue by arguing that a collection of clarity issues amounted to insufficiency when taken in combination. The Board of Appeal was not convinced by these arguments, reasoning that the only way to deal with a series of separate issues with the claim language was in a step-by-step fashion.

Pink or purple?
The patent in question related to a security device (EP 1567358) owned by De La Rue, a Basingstoke (UK) based manufacturer of security documents. The patent related to a security feature for documents such as bank notes and passports. Claim 1 of the Main Request considered by the Board of Appeal specified a security device, comprising 2 or more regions printed with luminescent material. Each of the regions exhibits different visible colours under different viewing conditions. Under visible light, the regions look the same. Under UV light (235-380nm), the regions are different visible colours.

The Opponent argued that the claims lacked sufficiency of disclosure (Article 83 EPC) for a list of reasons relating to how the colours were defined. The Opponent argued that two different observers do not see colours in the same way. Therefore, the Opponent submitted, a skilled person would have difficulty in differentiating the different colours. What appear to be different colours to one observer may be appear to be the same colour to another observer. Furthermore, the Opponent argued that the feature "viewing under visible light" did not exclude other forms of illumination being present (in the presence of which different colours may or may not become apparent). Additionally, the Opponent argued that the time frame for the colour change was not defined.

Each of the arguments do appear, on first glance, to be clarity objections. However, the Opponent argued that these separate problems with the claims should be considered in combination, and not one by one. The issues with how the colours were defined, the Opponent submitted, meant that the claims covered an infinite number of colours and colour combinations without offering the skilled person enough guidance: "it is always easy to dismiss sufficiency objections as clarity objections but in the present case, the skilled person lacks information on many issues".

Green or yellow?
The Patentee argued on the contrary that when dealing with sufficiency, it is necessary to break down the sum of potential problems and look at the different aspects: "when doing so, most objections are found to be based on clarity issues rather than on insufficiency of disclosure".

The Board of Appeal agreed with the Patentee. In particular, the Board of Appeal "could not endorse" the Opponent's objection that the insufficiency attack should be treated holistically as opposed to atomistically. The Board of Appeal's reasoning was quite simply that anything other than an atomisitc approach would be impractical: "there is no other way for the board to tackle the multiple objections than by breaking the sum of objections into distinct aspects" (r. 12.2.10). Furthermore, the Board of Appeal reasoned, the step-by-step approach is also the way in which the skilled person would tackle the problem: "A more holistic approach would have to be based on some overall impression and would therefore lack objectivity".

The Board of Appeal thus tackled each of the Opponent's objections in turn and (perhaps unsurprisingly) found that the majority fell under the category of a clarity as opposed to a sufficiency objection.

Blue or grey?
Visible light, the Board of Appeal reasoned, is a well-understood term. Particularly, it is well-known that a typical human eye can detect light in wavelengths from about 390 to 700 nm. Furthermore, the Board of Appeal considered that the fact that different eyes may see colours differently was irrelevant. The Board of Appeal accepted that "each eye and each brain is unique", but concluded that it is possible to define an average eye and an average colour perception. Furthermore, the Board of Appeal reasoned that it was possible to objectively measure the colour exhibited by a region, "regardless of what a colour-blind or culturally biased person might see or believe to see". The Board of Appeal also considered it to be within the ability of the skilled person to look at a security document and determine whether two regions were of different colours. The Board of Appeal thus concluded that the sufficiency objections were really hidden clarity objections.

The Board of Appeals view on the interaction between multiple clarity objections and insufficiency was, in this case, unequivocal. The test as always was whether the legal fiction of the skilled person would have difficulty working the invention, not whether everyone who wanted to work the invention would be able to do so. Furthermore, the Board of Appeal considered insufficiency to be an objective characteristic and something that should be assessed by considering each issue raised with the claims separately as opposed to in combination.
Shining the light on insufficiency (T 1285/15) Shining the light on insufficiency (T 1285/15) Reviewed by Rose Hughes on Monday, August 10, 2020 Rating: 5


  1. There remains a problem with the statement under point 12.2.7 of the reasons relating to trade marks. The BA held that “The fact that the disclosed embodiments are identified by their trade names rather than by their chemical formula is not decisive. The skilled person would have been capable of obtaining information on the respective chemical formulas if need be”. The problem is that the composition sold under a given trademark may change over time or might even disappear from the market. What then?

    I know that very often this problem is dealt with under Art 84, but I would rather consider it a problem of sufficiency. Nothing against explaining that some products are commercially available under a trademark. What is determining is the bulk chemical component underlying the product sold under a trademark, not the trademark under which they are sold. When Teflon® is used, is it the PTFE forming the bulk of Teflon® which allows a given effect to be obtained or one of the additives added to the PTFE sold under Teflon®.

    A majority of decisions of the BA are considering that Art 84 is at stake there and not Art 83. I am not convinced that it is the right approach in all cases.

    In T 0987/16, vermiculite was sold under a trademark, hence sufficiency can be agreed upon. In T 842/14, the anti-foam agents essential to the invention were only defined by trademarks, and sufficiency was denied. T 842/14 is also interesting in that in points 23-25 of the reasons some review of case law in the matter of Art 83/84.

    While it is possible to go from the chemical composition to the trademark, the reverse way is not possible as it implies adding matter to the original disclosure.

    A prima facie way to discriminate between Art 84 and Art 83 is that the former might be corrected provided there is a proper disclosure, whilst lack of sufficiency can in general only be overcome by adding subject-matter.

    The present decision is also interesting as it made clear that submissions from third-parties filed after expiry of the opposition period are to be treated, by way of a legal fiction, as "late". Article 115 EPC cannot be used to extend third parties' rights, let alone extend them beyond the rights of parties to the proceedings. As the documents were filed again in appeal by one of the parties, they were considered highly relevant and admitted.

  2. Attentive, the problem is that enablement is required at the filing date, not some time after publication. If is to be assumed that the trade marked product is commercially available at the filing date, there is no enablement issue present. A clarity objection is the correct one.

  3. Dear Kant,

    I beg to disagree. The problem is similar to that of norms. A norm can vary between the priority and the filing date. Which one is then the norm applicable? A norm can also vary with time like the composition of a product only defined under a trademark. Just giving the number of a norm is not enough, the valid date/version of the norm has to be given either at filing or at priority date. Adding the date after filing amounts clearly to add subject-matter, hence there is a problem under Art 83 and not Art 84.

    The same applies if the determination of some features is disclosed as being carried out on a specific machine. This machine has to be available during the whole life time of the patent.

    In point 3.3 of the reasons in T 1714/15 the BA held that an invention has to be enabled throughout the lifetime of a patent. As the machine needed to measure a given parameter is no longer available then sufficiency is lacking.

    In Point 3.3.2 of the reasons the BA added: “Confirmation of the fact that a patent has to be enabled throughout its whole lifetime, especially when the feature under consideration is a product which is marketed under a trademark, may be found in Case Law of the Boards of Appeal of the EPO, 9th edition 2019, Chapter II.C.6.6.9, third paragraph: "[When] the products designated by trademarks are essential for carrying out the invention, the requirements of Art. 83 EPC are fulfilled if these products are available to the skilled person not only at the priority and filing dates of the patent but also during its whole lifetime".

    That in certain jurisdictions it might be enough when the product only defined by a trademark is available at filing time, in view of the above the only valid conclusion at the EPO is that the correct objection is Art 83 and not Art 84.

    When coming up with Art 84, the BA make life easy for them as in opposition it cannot be brought forward. But this is not always correct.

  4. In my opinion, neither the decision T 1714/15 nor the cited passage of the Case Law of the BoA find any basis in the EPC and are thus not to be followed. If the patent applicant sufficiently disclosed the invention the priority/filing day, the public benefited from the disclosure. Hence, the patent applicant deserves patent protection as compensation.

  5. Dear Anonymous,

    Any opinion has to be respected, but it fear you might end up in the wall with your attitude, at least at the EPO.

    The patentable contribution to the art does not stop one day after filing, but the availability of the technical teaching should be insured over the whole lifespan of the patent.

    Otherwise, the contract theory at the basis of the whole patent system, monopoly in exchange of a technical teaching, does not make any sense.

    Such a fundamental idea is something which does not have to be specified in the EPC, and every IP specialist should know it.

    Would you consider that a snapshot is the same as a whole film?

  6. You think it is right that the applicant disclosed the invention at the filing/priority date to the public in exchange for patent protection and later the EPO says: "Sorry not bound to the contract monopoly in exchange of a technical teaching anymore?"
    What the public does with the disclosure at filing/priority date (or, admittedly, publication date) is not something the applicant/patentee can influence.

  7. Attentive, the problem is that enablement is required at the filing date, not some time after publication. If is to be assumed that the trade marked product is commercially available at the filing date, there is no enablement issue present. A clarity objection is the correct one.
    See more: amazon


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