2. Reproducibility and sufficiency of disclosure

Another requirement for an invention to be considered susceptible of industrial application within the meaning of Art. 57 EPC is that the technical teaching disclosed in the application under Art. 83 EPC is reproducible.

In T 718/96 the board held that reproducibility was to be assessed in the first instance with reference to Art. 83 and 100(b) EPC 1973, which lay down that the invention must be disclosed in such a way that it can be carried out by a skilled person. Art. 57 EPC 1973 could also serve as a basis for objecting to a lack of reproducibility, because an invention that could not be carried out was also not susceptible of industrial application, but such an objection was always to be based on the most specific applicable provision. Nevertheless, given the link between the two notions, any findings as to reproducibility would apply in equal measure to industrial application under Art. 57 EPC.

In T 1450/07 the board noted that the information in the application as filed should make plausible the identity of the claimed compound. Thus, the compound could be attributed to a known family of molecules on the basis of a comparison between its primary structure and that of molecules known in the art. Then, its putative functions could be disclosed. Experimental evidence was not necessarily needed. A number of reasonable assumptions could be made by taking into account the known functions of other family members as well as, for example and not exclusively, by taking into account the distribution of the claimed compound in the body. The treatments therein mentioned were in relation to the function plausibly attributed to the molecule. Post published evidence backing up these assumptions was always welcome and the quality of the information was also fundamental. The board pointed out that each case had to be evaluated on its own merits. The board decided in the case at issue that the requirement of industrial applicability was fulfilled.

In T 18/09 the board noted that the close inter-relationship between Art. 83 and 57 EPC was already addressed in previous decisions (see inter alia T 898/05). In respect of Art. 83 EPC, established case law of the boards of appeal stated that a patent could only be objected to for lack of sufficiency of disclosure if there were serious doubts, substantiated by verifiable facts (see T 19/90, OJ 1990, 476). For the board, it would not be justified and unfair to set a different standard of proof in respect of Art. 57 EPC.

In T 541/96 the gist of the invention consisted in inducing nuclear fusion between light nuclei and heavy unstable nuclei at low temperature by means of an electric field. The board held that an invention or an application for a patent on an alleged invention which was incompatible with the generally accepted laws of physics did not meet the requirements of Art. 57 and 83 EPC 1973, because it could not be used and therefore lacked industrial application.

The EPC did not exclude "revolutionary" inventions from being patented. However, Art. 83 EPC 1973 made the amount of information required for a sufficient disclosure of an invention somewhat dependent on the actual "nature" of the invention. However, if the invention seemed, at least at first, to offend against the generally accepted laws of physics and established theories, the disclosure should be detailed enough to prove to a skilled person conversant with mainstream science and technology that the invention was indeed feasible (i.e. susceptible of industrial application). This implied, inter alia, the provision of all the data which the skilled person would need to carry out the claimed invention, since such a person, not being able to derive such data from any generally accepted theory, could not be expected to implement the teaching of the invention just by trial and error.

The appellant had provided neither experimental evidence nor any firm theoretical basis which would enable the skilled person to assess the viability of the invention; the description was essentially based on general statements and speculations which were not apt to provide a clear and exhaustive technical teaching, Thus, it was irrelevant to consider whether the fusion reactions referred to in the description might be theoretically possible, or whether they might indeed occur under certain conditions.