Trilateral Project 24.1-Biotechnology 049

In principle, the claims must be supported by the description. This means that there must be a basis in the description for the subject matter of every claim and the scope of the claims must not be broader than justified by the extent of the description and drawings.

As a general rule, a claim will be regarded as being supported by the description unless exceptionally there are well-founded reasons for believing that the skilled man would be unable, on the basis of information given in the application as filed, to extend the particular teaching of the description to the whole of the field claimed by using routine methods of experimentation or analysis. Support must however be of a technical character; vague statements or assertions having no technical content provide no basis.

Claims should not extend to subject matter which, after reading the description, would still not be at the disposal of the skilled person. Claiming not only the technical contribution to the art actually described but also to monopolise overtly covetously a technical area extending well beyond it would be contrary to the requirements of support. Hence, all essential feature must be included in the main claim. The disclosure of the invention is only sufficient if it enables the skilled person to obtain substantially all embodiments falling within the scope of the claims. The disclosure of one way of performing the invention is only sufficient if it allows the skilled person to perform the invention in the whole range that is claimed. Thus, an objection of lack of support under Article 84 EPC can often also be considered as an objection of insufficient disclosure under Article 83 EPC; that is to say, the objection being that the disclosure is insufficient to enable the skilled person to carry out the "invention" over the whole of the broad field claimed (although sufficient in respect of the narrow "invention").

Where certain subject matter is clearly disclosed in a claim of the application as filed, but is not mentioned anywhere in the description, it is permissible to amend the description as that it includes this subject matter.

In a recent decision of a Board of Appeal a claim was held to be insufficient under Article 83 EPC in view of the feature "has human tissue plasminogen activator function" by which in the claim in question the protein solely is characterized. According to the Board the claim under consideration relates to a vast catalogue of derivatives of human t-PA of unspecified structure having any unspecified function of human t-PA. Consequently, in the Board's judgement, the examples and information given are not sufficient to allow a person skilled in the art, using common general knowledge, to perform the invention without undue burden in the whole area claimed, especially in consideration of the broad functional meaning attributed to the quoted parameter. The claim leaves the skilled addressee guessing as to whether any derivative of human t-PA which fulfills only one of the functions typical of this molecule is a derivative meant by the claim.