6.6.6 Machine not available

In T 1293/13 the claims limited the determination of air permeability of the garment to a particular method and to a particular machine ("Frazier 750"). However, the machine "Frazier 750" no longer existed, such that this machine could not be used for determination of the claimed values. The insertion of a feature defined as determinable by a specific machine which possibly was not – but certainly is no longer – publicly available, leads in this case to the invention not being disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

In T 1714/15 the board noted that the DROP-WEIGHT TESTER RTD-5000, as described in claim 1, was uncontestedly never available. Rather, the known apparatus was a DROP-WEIGHT TESTER RDT-5000 (emphasis by the board). The respondent (patent proprietor) argued that it had provided evidence that the apparatus with the correct designation was available at the priority date and at the date of filing of the patent in suit. Thus the invention as defined in claim 1 was enabled at that point in time, which the board accepted. However, the board stated that an invention had to be enabled throughout the whole lifetime of a patent (T 1293/13). This was not the case here. The respondent stated that there was no proof that the apparatus recited in claim 1, with the correct designation, did not exist somewhere in the world. However, the respondent had stated in its reply to the grounds of appeal that the contentious apparatus had become unavailable. In such a case, following the principle of "negativa non sunt probanda" (T 2037/18), the burden of proof that the apparatus had ceased to exist was not on the opponent. Rather, the proprietor had to prove that such apparatus was still available. In the absence of such proof the board concluded that the apparatus was no longer available, (requirements of Art. 83 EPC not met).