epi Information 4/2010

Information 4/2010 Articles 129implementations in national or regional patent laws(compare e.g. the EPC and the PCT), leading away fromthe intended harmonization.Although the implementation of filing date requirementsin the EPC 2000 closely follows the PLT provisions,it has resulted in a system that is substantially morecomplicated than under the EPC 1973, defying the aimof streamlining of the PLT.Filing by reference appears already to have becomeoutdated by advances in transmission technology andshould not be regarded as a preferred option for filing apatent application with the EPO.No Teaching Without Disclosing – a response to StellbrinkH. Sendrowski 1 (DE)1. IntroductionIn a recent article, Stellbrink 2 highlights a number ofissues concerning inventions relating to industry standardssubject to a non-disclosure and licensing agreement,and invites comments. Specifically, he observesthat EPO examiners habitually refuse patent applicationsclaiming an invention in the field of DVD technology;such refusals are based on Art. 83 EPC due to an allegedinsufficient disclosure of the invention. In a nutshell,Stellbrink agrees that the DVD standard specification –albeit being an important teaching for carrying out theinvention – is not described in the respective patentapplication due to the non-disclosure agreement coveringthe standard. However, he maintains that the inventionis still sufficiently disclosed in accordance withArt. 83 EPC as every skilled person can get access tothe standard specifications, and the specifications themselvesare clear and enabling.Indeed, the situation described by Stellbrink is set toraise eyebrows, as in other fields of technology referencesto industry standards traditionally are a suitablemeans of ascertaining sufficiency of disclosure. Furthermore,it is not compelling that a standard shouldcease to be enabling just by subjecting it to a non-disclosureagreement while still every interested party canget full access to and make full use of the standardspecifications.Alas, this is not the whole story. There are gravearguments supporting the EPO examiners’ position.2. The need for sufficient disclosureAccording to a theory widely promulgated, patents aregranted in exchange for the complete disclosure of aninvention. The inventor is encouraged to invent bygranting him an exclusive right to make use of theinvention for up to 20 years. Without patent protection,1 German and European Patent Attorney, Bremen2 epi Information 2010, 91-94an inventor would be tempted to withhold key elementsof his teaching for fear of competitors who, by sheerfinancial and economic power, could otherwise forcehim out of the respective market, thereby effectivelypreventing him from earning the fruits of his labour.This encouragement and protection comes with aprice tag: The inventor is required to disclose the inventionin such precision that another skilled person couldwork according to the teaching and thus make practicaluse thereof. There would not be a reason for granting aprivilege like a patent to an inventor who chooses not todisclose the invention. Instead, the scope of protectionmust be commensurate to the scope of enabling disclosure3 .Accordingly, Articles 83 and 100 b EPC stipulate thata European patent application and a European patent,respectively, shall disclose the invention in a mannersufficiently clear and complete for it to be carried outby a person skilled in the art.3. The standards of sufficient disclosure3.1. There is no touchstone to measure sufficiency ofdisclosure against. Instead, the EPC relies on the notorious„person skilled in the art“. This has consequenceswith respect to the volume and detail of informationrequired to achieve sufficiency of disclosure.3.2. A problem not discussed by Stellbrink is the technicalfield to be considered „the art“, and correspondinglythe capabilities attributed to the skilled person.According to T 422/93, the skilled person (when decidingon inventiveness) is to be defined in view of the technicalproblem to be solved on the basis of what the closestprior art discloses 4 . However, such reasoning does notseem appropriate for selecting the skilled person whendeciding on sufficiency of disclosure. A major differencebetween the analysis of inventive step and of enabling3 T 409/91, section 3.54 T 422/93, section 3.6.1