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 theÂ matter for which protection is sought. They shall be clear and concise and be supported by theÂ description. This article applies to patent claims and as can easily be observed, there is not anÂ explicit requirement of defining essential features.
Successive Boards of Appeal have overturned Âessential featuresÂ objections and have clarified theÂ functions of claims, but they did not deny that this objection exists, so therefore the Boards ofÂ 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 theyÂ would need or should be in order to persuade the Examiner of the validity of their patentÂ 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 whichÂ protection is sought Â
be clear. The board of Appeal considers that this has to be interpreted asÂ meaning not only that the claim from a technical point of view must be comprehensible but alsoÂ that it must define clearly the object of the invention, that is to say indicate all the essential
As essential features have to be regarded all features which are necessary to obtain the desiredÂ effect, or, differently expressed, which are necessary to solve the technical problem, which theÂ application is concerned.
The Board of Appeal was thinking on Rule 29(3), which provides that any claim stating theÂ essential features of an invention may be followed by one or more claims concerning particularÂ embodiments of that invention.
Rule 29(3) appears to be entirely permissive in character, more than a requirement for theÂ applicant it seems to be a possibility for the applicant to envisage claims, which containÂ essential features and claims that do not.
It cannot be understood either that the definition of essential elements must be submitted inÂ order to comply with the requirement 84 EPC, as the Âsufficient disclosureÂ relates to article 83Â 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 theÂ scope of protection sought for an invention.