In an interesting Decision, the Technical Board of Appeal in Decision No. T561/96 (Hitachi) overturned the Examining Division's finding of lack of sufficiency of disclosure. In this respect, the Examining Division had commented that, in their opinion, the description did not disclose the invention sufficiently to allow it to be carried out by a person skilled in the art. The Examining Division subsequently found that the invention was both novel and inventive over the prior art but nevertheless refused the Application for lack of sufficient disclosure.

The Technical Board of Appeal held that, because the invention had been disclosed sufficiently to allow the Examining Division to ascertain both the novelty and inventiveness of the invention, the invention could not then be considered to be insufficiently disclosed. The Technical Board of Appeal, therefore, held that the Examining Division had effectively proved that the invention was sufficiently disclosed in the Application by virtue of their ability to find on novelty and inventive step. This Decision confirms that a Patent Application should be read as a person skilled in the art would read the document, in the light of their common general knowledge.

The Technical Board of Appeal Decision T694/92 (Mycogen Plant Science, Inc. / Unilever N.V., et al.) confirms the requirements for sufficiency of disclosure and support for the claims in the description. The Decision makes it clear that, if the invention relates to the actual realisation of a technical effect which is already anticipated on a theoretical level in the prior art, it is important that a proper balance is found between the actual technical contribution of the state of the art and the terms in which it is claimed. It confirms the finding of Technical Board of Appeal Decision No. T292/85 (Genentech), in that a single example is only a sufficient description of a claimed invention if a person skilled in the art could fairly extrapolate the results of that example across the entire breadth of the claim without inventive effort. However, if serious doubts exist as to whether the effect disclosed in the Application can readily be obtained for the whole range of a claim, the claim is not sufficiently supported by the description.

Ultimately, it is important to remember, when drafting an Application for Europe, that claims of broad scope may not be allowable if a skilled person, after reading the description, is not able readily to perform the invention over the whole area claimed, without undue burden and without needing inventive skill.