The Patent Applications And The Definition Of Essential Features Of The Invention

Increasingly, the European Patent Office raises the objection that claims (although are considered novel and inventive) fail to define the essential features of the invention.

This Article 84 of the European Patent Convention (EPC) only says that the claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description. This article applies to patent claims and as can easily be observed, there is not an explicit requirement of defining essential features.

Successive Boards of Appeal have overturned “essential features” objections and have clarified the functions of claims, but they did not deny that this objection exists, so therefore the Boards of Appeal are still allowing Examiners to raise objections based on this argument.

This situation is forcing applicants with limited budgets to narrow their claims more than they would need or should be in order to persuade the Examiner of the validity of their patent applications and save the time and expenses required to go to an Oral Hearing.

The problem started with the case T 32/82, which stated that:

Article 84 EPC requires, amongst other things, that the claims, which define the matter for which protection is sought … be clear. The board of Appeal considers that this has to be interpreted as meaning not only that the claim from a technical point of view must be comprehensible but also that it must define clearly the object of the invention, that is to say indicate all the essential
features thereof.

As essential features have to be regarded all features which are necessary to obtain the desired effect, or, differently expressed, which are necessary to solve the technical problem, which the application is concerned.

The Board of Appeal was thinking on Rule 29(3), which provides that any claim stating the essential features of an invention may be followed by one or more claims concerning particular embodiments of that invention.

Rule 29(3) appears to be entirely permissive in character, more than a requirement for the applicant it seems to be a possibility for the applicant to envisage claims, which contain essential features and claims that do not.

It cannot be understood either that the definition of essential elements must be submitted in order to comply with the requirement 84 EPC, as the “sufficient disclosure” relates to article 83 EPC and is a requirement for the application as a whole, but not for a claim as such.

Moreover in T 990/99 the Board of Appeal stated that the function of a claim is to set out the scope of protection sought for an invention.

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