It should go without saying but….
EPO Enlarged Board of Appeal significantly changes formal requirements for making a valid priority claim.
The standard of disclosure required for proper support for a feature in a patent claim varies between jurisdictions and has also changed over time.
In older Patents Acts, such as the UK Patents Act 1949 and the Australian Patents Act 1990 (up until 2013), the concept of what is claimed compared to what the body of the specification, when read as a whole, discloses as the invention, was known as ‘fair basis’.
The words “supported by the description” were new in the 1977 UK Patents Act (to bring the UK law into closer alignment with the European position) and a move to amend the language in the Australian Patents Act to ‘support’ was made in 2013 (again, to bring the Australian law into alignment with the 1977 UK legislation).
In the United States, as outlined in Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1084 (Fed. Cir. 2005), ‘the ‘written description’ requirement in 35 USC 112 implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee [inventor] was in possession of the invention that is claimed’.
The main pressure point in relation to ‘support’ comes during examination or a later challenge, when an applicant attempts to amend a claim. In such a circumstance, the amendment must be supported by the specification as filed. Not only that, but if the specification as filed claims priority from one or more application(s) having an earlier date, then the amendment must be supported by the earlier application(s), to keep the earlier date.
Even though the wording used in legislation and case law in different jurisdictions, is basically the same, in that ‘support’ is required in the specification for each feature in a claim (and the invention as a whole defined in a claim), the application of the law in different jurisdictions leads to quite different positions in each of the UK Patent Office, the European Patent Office (although these are similar) and the United States Patent and Trademark Office (USPTO) in particular.
More recently however, there has been a trend towards convergence of the law from different jurisdictions which was again brought front and centre by the United States Federal Circuit Court who affirmed a decision by the USPTO finding that a patent claim directed to the anti-cancer drug sofosbuvir was not adequately supported by the written description in the earlier applications from which it claimed priority and that as a result, there was a prior art document published after the date of the earlier applications and before the challenged amendment, which invalidated the patent claims. This decision has significant effect as the patent owner launched their tablet in late 2013 at a price of $1,000 per pill ($84,000 for a 12-week treatment) in the US and invalidation of the patent allowed generic versions of the drug for as little as $335 per 12-week treatment.
As explained in the USPTO Manual of Patent Examining Procedure §2163, the US written description requirement prevents an applicant from claiming subject matter that was not adequately described in the specification as filed. New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement.
The recent US decision is further evidence of the US Federal Circuit Court’s trend over the last 10-15 years of requiring ‘more’ to comply with the ‘support’ requirement in the US, in effect, raising the bar for establishing that an amendment is properly supported by the specification as filed and/or any earlier applications.
This trend is moving the US position, at least in the Federal Circuit Court, towards the much stricter positions in the UK and more particularly, Europe.
The UK position is based mainly on a 1983 decision in which it was held that if claims are put forward which cover something which plainly was never within the contemplation of the invention as described in the specification, then they lack support. This view was reinforced in a later 1993 decision where it was held that the correct approach was to consider the claims in the specification through the eyes of the skilled person in the art, to ascertain what is the invention which is specified in the claims, compare that with the invention described in the specification and thereafter decide whether the invention in the claims is supported by the description. “The word ‘support’ means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.”
The European position is captured in Article 84 EPC and Article 123 EPC, which together provide a basis for the general rule that a claim is regarded as supported by the description unless there are well-founded reasons for believing that the skilled person would be unable, on the basis of the information given in the application as filed, to extend the particular teaching of the description to the whole of the field claimed by using routine methods of experimentation or analysis and that any amendment which goes beyond this is not allowable.
So, in Europe, whilst literal or word for word support is not required to support an amendment (although in practice, it is often required by the Examining Division of the European Patent Office), the support must be ‘directly and unambiguously derivable’ by a person skilled in the art using the common general knowledge, from the disclosure of the application as filed.
The European Patent Office position in relation to support, is more onerous than the UK and USPTO positions.
The question then is: how best to provide support for an invention in a patent specification, knowing that most claims are generalisations from one or more particular examples of the invention and that a fair claim should be broad enough to cover all of the scope to which the inventor is entitled, but not so broad as to cover things which the inventor did not actually invent?
This is perhaps best achieved by including a “consistory clause” or “statement of invention” setting out the nature of the invention in the description. This statement can be quite broad and sets out the nature of the invention, and an initial set of features considered to be essential to that invention. This statement should be broad enough to cover all of the aspects of the invention and any examples.
This is typically followed by each ‘preferred’ feature that the invention may possess, but which are not essential. Each preferred feature sets up a fallback position beneath the broad statement of invention. Each preferred feature should also have an accompanying statement of advantage so that a reader is informed as to why that feature might be used in the invention.
This style is much more preferred in the UK or Europe, than one which includes few, if any statements of invention, and in which the bulk of the description of the features of the invention is done with reference to the examples or Figures illustrating the invention. It is quite difficult in specifications of this type to decouple one feature from others which are shown and described as a part of a combination in the drawings of the application.
Importantly, a feature initially presented as a preferred feature can be made essential via an amendment, if required. It must be remembered that a patent claim can be narrowed after filing, but not broadened, unless there is support for that!
Preparing a patent specification in this way, gives much greater latitude in proposing amendments which distinguish an invention from prior art documents raised during examination.
So, whilst it can be said that the requirements for ‘support’ are moving toward being more coherent and similar, they are still far from the same, despite trends toward alignment, and that some small changes in the presentation of features of an invention when preparing a patent document, can be of great help, when it comes to examination of a patent application and secure broader scope, when granted.
For further information, please get in touch to speak to one of our patent attorneys.