7.1.4 Broad claims

The mere fact that a claim is broad is not in itself a ground for considering the application as not complying with the requirement for sufficient disclosure under Art. 83 EPC. Only if there are serious doubts, substantiated by verifiable facts, may an application be objected to for lack of sufficient disclosure (see T 19/90, OJ 1990, 476, point 3.3 of the Reasons). See also T 612/92, T 309/06, T 617/07, T 351/01, T 21/05, T 1188/06, T 884/06 and T 364/06.

In some cases, more technical details and more than one example were found necessary in order to support claims of a broad scope, for example where the essence of the invention was the achievement of a given technical effect by known techniques in different areas of application and serious doubts existed as to whether this effect could readily be obtained for the whole range of applications claimed, more technical details and more than one example may be required (see T 612/92; T 694/92, OJ 1997, 408; T 187/93 and T 923/92). In T 694/92 incomplete guidance was given. The claimed subject-matter concerned a method for genetically modifying a plant cell. In fact, the board held that the experimental evidence and technical details in the description were not sufficient for the skilled person to reliably achieve, without undue burden, the technical effect of expression in any plant cell of any plant structural gene under the control of any plant promoter. Further cases where more than one example was required can be found in this chapter II.C.7.4.

In T 19/90 (OJ 1990, 476) the claimed invention was defined by the incorporation of an activated oncogene sequence into the genome of non-human mammalian animals in general. The examining division refused the application on the grounds that in the light of the differences among different animals, it could not be assumed that the sole example given – mice – could be extended to all other non-human mammalian animals and the claims were thus unrealistically broad. The board disagreed.

In T 636/97 it was emphasised that it is a fundamental principle of patent law that a claim can validly cover broad subject-matter, even though the description of the relevant patent does not enable every method of arriving at that subject-matter to be carried out. Otherwise no dominant patent could exist, and each developer of a new method of arriving at that subject-matter would be free of earlier patents. In T 694/92 (OJ 1997, 408) the board held that, where an invention relates to the actual realisation of a technical effect anticipated at a theoretical level in the prior art, a proper balance must be found between, on the one hand, the actual technical contribution to the state of the art by said invention, and, on the other hand, the terms in which it is claimed, so that, if patent protection is granted, its scope is fair and adequate. The board highlighted the interrelation between the requirements of Art. 84, 83 and 56 EPC 1973. See also T 187/93.

In T 2249/16 the contested decision had found fault with the claims on the grounds that they covered an extremely large number of possible of compounds or methods and were also broad in comparison with the examples. The board held that this was not enough alone to establish insufficient disclosure.

On broad claims, see in particular chapter II.C.7.3. below, which deals with antibodies defined by functional features.