The traditional law of insufficiency

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The traditional law of insufficiency is derived from the conception of the disclosure in a patent specification as the patentee’s consideration to provide to society at large as the quid pro quo for a patent monopoly in a contractual sense[1], and can be traced back to Liradet[2]. The general concept of disclosure in modern insufficiency established thereby was further developed and molded in UK statutory law[3] that most relevantly raises insufficiency as revocation ground[4]. The requirement set out thereby is that a patent specification shall constitute an enabling disclosure of the invention claimed in the claims[5], and thus, a specification is deemed insufficient if a person skilled in the art that follows the express teaching of the disclosure cannot perform the invention at all or without a prolonged, research, enquiry or experiment[6].

In addition, the common law doctrine of undue claim width comprises this insufficiency principle, in particular with regard to claim objections to an unduly breadth relative to the extent of disclosure, i.e. for covetous claiming[7].

The so-called Biogen insufficiency[8] goes further and hearkens back to the development of chemical product claims in the UK’s early 20th century when chemical inventions were limited to product-by-process claims[9]. At those times, any chemical product had to be defined by its distinct method of processing. This said, the development and shortcomings of this particular patent claim category were well known, but although the House of Lords (HoL) was dealing with product-by-process claims in Biogen, it held that this claim category comes under the same judicial consideration as applied to simple product claims with regard to sufficient disclosure[10], and therefore, it is insufficient if a person skilled in the art is enabled by the disclosure to perform a single embodiment of the claimed invention by following the teaching of the specification[11].

This means, that in the light of the above mentioned undue claim width doctrine and with regard to immature fields in historical sense the reasoning that the specification must make up for sufficient disclosure that enables the invention to be performed to the full extent of the monopoly claimed, aims for a limitation of patentability for the sake of not unduly stifling industrial and technological development in this field[12].

Thus, it becomes clear that when Lord Hoffman held that the legal principle is that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified[13], it severed the sake of not over-monopolizing a young science field. This analysis is affirmed by the Lord Hoffman’s conclusion that the claim wording which aims for a monopoly on any recombinant method of making the antigens is not justified as a claim because the essential features relevant for technical contribution as disclosed by the specification did not enable a person skilled in the art for the ‘any recombinant of’ scope of invention[14].

The HoL’s ratio decidendi in Biogen as analyzed above has been purporting a new principle of insufficiency that does not differentiate between simple products or classes of products comprised by wide processing methods, i.e. flowerpots and DNA sequences.

Along with partially application of Biogen insufficiency principle by the courts, the unitary rule to apply this rationale to all kind of claimed inventions and their disclosure in the specification raised criticism. This lead to a renunciation thereof in Lundbeck[15], whereas Lord Hoffmann, plagued of his own dicta, concluded that the Biogen insufficiency is to be limited to product-by-process claims and therefore his learned friend Kitchen J. erred in equating the relevant technical contribution to the method rather than to the product, because the Biogen insufficiency does not apply to simple product claims in which the technical contribution of the invention is the product itself[16], even when only one method to create it is disclosed in the patent specification[17]. Moreover, Lord Hoffmann clarified that with regard to the Biogen insufficiency, the respective statutory provisions and EPC statues as mentioned above do not lead inevitably to the conclusion that simple product claims must also support all methods of creating the product[18].

In conclusion, the marriage of ‘sufficiency disclosure’ concept to the invention itself as defined in the claims under the clarification in Lundbeck was confirmed in Conor Medsystems[19]. Hereby, it was established that when determining the inventive step, it is only necessary to consider the invention as defined by the claims, and not in the disclosure in the patent specification[20], and therefore, there is still room for debate in this issue, when the scope of invention is to be construed.

[1] In other words, in the age of industrialization or in times of a technology leap of industrial or otherwise applicable development, such as nowadays biotech, the proposes of disclosure is, besides to limit the scope of monopoly right granted to the inventor by the claims of the patent, to facilitate technology transfer or diffusion of knowledge. Reference is made to David J. Brennan, “The Evolution of English Patent Claims as Property Definers” (2005) 4 Intellectual Property

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