2.11.7.1A Principles for Examination

Note: The information in this part only applies to:

• standard patent applications with an examination request filed on or after 15 April 2013.
• innovation patents with an examination request filed on or after 15 April 2013.
• innovation patents where the Commissioner had not decided before 15 April 2013 to examine the patent.  

For all other standard patent applications/innovation patents, see 2.11.7 Claims are Fairly Based.

In this topic:

Note: For a summary of the principles underlying clear enough and complete enough disclosure, support and usefulness, see 2.11A Annex B – Summary of the Clear Enough and Complete Enough Disclosure, Support and Useful (Utility) Provisions.

Overview

Subsection 40(3) requires that the claim(s) must be supported by matter disclosed in the specification.  To comply with sec 40(3), the scope of the claims must not be broader than is justified by the extent of the description, drawings, graphics, photographs, sequence listing and the contribution to the art.  This means that:

“… the definitions in the claims [i.e. the claimed invention] should essentially correspond to the scope of the invention as disclosed in the description.  In other words, … the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.” (Generics (UK) Ltd v H Lundbeck A/S [2009] RPC 13 at [36], affirming T 409/01)

The mere mention in the description of features appearing in the claims is not necessarily sufficient support.  The word ‘support’ means more than just coincidence of language and requires the disclosure to be the base which supports grant of a monopoly of the width claimed. (Schering Biotech Corp.'s Application [1993] RPC 249 at 252-253)

The applicant is not required to restrict the claims to the specific embodiments described, but the scope of the claims must be properly supported by the matter disclosed in the body of the specification.  

Most claims are generalisations of one or more particular examples set out in the specification.  The extent of generalisation permissible is a matter which must be judged in each particular case in the light of the relevant prior art.  An inventive idea or step which can be practically applied to open up a new field may be claimed more broadly than one which is concerned with advances in a known technology.  However, a claim will not be supported for the purposes of sec 40(3) if it is so broad that it encompasses any embodiment that the inventor has not enabled and/or which owes nothing to the teachings of the specification or any principle which it discloses.  

Applicants should be allowed to cover all obvious modifications, equivalents to, and uses of, that which they have described in detail.  In addition, applicants should be allowed to draft broader claims when it is reasonable to expect (reasonable to predict) that all the variants covered by the claims have the properties or uses ascribed to them in the body of the specification.

Consideration of Support

The proper construction of the specification and claims is fundamental to the consideration of whether the claimed invention is supported by the matter disclosed in the specification (see 2.11.2 Construction of Specifications).  Each application should be assessed on its own merits based on a proper construction of the specification and the facts of the case.

In order to determine whether the specification complies with sec 40(3), examiners should:

• construe the claims (see 2.11.2 Construction of Specifications);
• compare the claimed invention with the matter disclosed in the body of the specification (i.e. the description, together with any drawings, graphics, photographs and sequence listing); and
• determine whether, on the balance of probabilities, the specification satisfies the following criteria:

1. The body of the specification must contain an enabling disclosure, i.e. it must disclose the claimed invention in a way which will enable it to be performed by a person skilled in the art without undue burden, or the need for further invention (Asahi Kasai Kogyo KK’s Application [1991] RPC 485 at 536); and
2. The extent of the patent monopoly as defined in the claims must not be broader than is justified by the extent of the description, drawings, graphics, photographs, sequence listing and the contribution to the art.

The principles for examining these criteria are discussed further below.

Enabling Disclosure

Under sec 40(3), the matter in a claim of a specification must be supported by an enabling disclosure in the description and any drawings, graphics, photographs and sequence listing (i.e. the body of the specification).  

The level of disclosure required under sec 40(3) is the same as that required for sec 40(2)(a) (Asahi at 536 approved by the House of Lords in Biogen Inc v Medeva Plc [1997] RPC 1 at 49).  The principles to be applied in determining whether the specification provides an enabling disclosure are those discussed in 2.11.3.4.2A Section 40 Enabling Disclosures.  Note that references in that part to ‘the specification’ or ‘the complete specification’ should be read as ‘the body of the specification’.  

Scope of the Claims Must Not be Broader Than is Justified by the Contribution to the Art

A contribution to the art will broadly be a product or process that is disclosed in the specification, which is novel and inventive (or innovative) and enabled by that disclosure (for further information see 2.11.7.1.1A Contribution to the Art).  

The breadth of a claim may exceed the contribution to the art in two ways:  

• it may claim results which are not enabled, such as the making of a wide class of products when it enables only one of those products and discloses no principle which would enable others to be made; or
• it may claim every way of achieving a result when it enables only one way and it is possible to envisage other ways of achieving that result which make no use of the invention. (Biogen at 51)

In Biogen at 50, Lord Hoffmann distinguished these two points.  The first he described as being whether the disclosure “could, so to speak, deliver the goods across the full width” of the claims (i.e. whether the disclosure enabled the claimed invention).  The second point for consideration was “not whether the claimed invention could deliver the goods, but whether the claims cover other ways in which they might be delivered: ways which owe nothing to the teaching of the [specification] or any principle which it disclosed.”

Thus, having considered the question of whether the body of the specification contains an enabling disclosure, examiners should view the claims more broadly and consider whether the scope of the claims encompasses:

• alternative products or processes that the disclosure has not enabled, particularly where there is no principle of general application evident or where the claim defines the invention in terms of the result to be achieved; and/or
• ways of making the product or working the process which owe nothing to the teaching of the specification or any principle it discloses.  

This assessment should be made on the basis of the material on file in relation to the application and information available in any FERs.  Examiners are not required to search for further information, however if they are aware of a relevant document this may be retrieved.  

Objections Under Sec 40(3)

The claims should be considered to satisfy the requirements of sec 40(3) where, prima facie, there is no reason to suppose either that the invention cannot be performed over the whole scope of the claims, or that the claims encompass matter that owes nothing to the teachings or principles disclosed.  

Examiners should not raise objections under sec 40(3) based on speculation that an alternative embodiment falling within the scope of the claims, which has not been enabled, may be developed at a later date.

However, unless examiners are reasonably satisfied, on the balance of probabilities, that the claims comply with sec 40(3), the objection should be raised.  The objection must include logically sound reasons supporting the assertion that a claim is not supported by an enabling disclosure and/or is broader than is justified by the extent of the disclosure and the contribution to the art.  

An objection under sec 40(3) cannot be overcome by adding new matter which would contravene sec 102(1).  Therefore, if the applicant cannot otherwise overcome the objection, the claims must be restricted accordingly.

Where the claimed subject matter is not novel and/or does not involve an inventive step, it will be broader than is justified by the applicant’s contribution to the art and, as a consequence, will lack support. However, where the lack of support is wholly a result of the lack of novelty and/or inventive step, examiners need not raise an objection for lack of support, since overcoming the novelty and/or inventive step objection would fully address any objection under sec 40(3).

Establishing Support for the Claims

Where the applicant responds to an objection under sec 40(3) with evidence (e.g. in the form of experimental data, or a statement by a relevant person skilled in the art), or credible and plausible submissions that adequately address the examiner’s concerns, the objection should be withdrawn.  However, a mere assertion that the claimed subject matter is supported is not sufficient to overcome a reasoned objection under sec 40(3) (see also 2.11.7.4A Support in View of Proposed Amendments).

Where an issue is not resolved despite subsequent adverse reports, the supervising examiner should consult Patent Oppositions on the further progress of the case, including whether to set the matter for hearing with the intent to refuse the application.

Support in View of Later Developments in the Field of the Invention

A claim may encompass products or processes which involve the use of technology unknown at the time the claim was drafted (Kirin-Amgen Inc v Hoeschst Marion Rousel Ltd [2005] RPC 9 at [80]).  Such a claim may subsequently be found to lack support if it encompasses a later product or process that the specification does not enable and which makes no use of the invention it discloses.  Examiners may not be aware of such developments during the course of examination, however this type of information may be introduced with third party submissions or a re-examination request.  

However, where an improvement is subsequently made to a claimed method which involves an inventive step, although the use of the improvement would still provide a means of working the original invention, the specification does not become insufficient merely because it does not enable the person skilled in the art to make the inventive improvement.  For example, if a further invention involving selection of a particular integer falling within a broad term in a claim improves the way the invention works, the original specification is not required to enable the selection. (Kirin-Amgen at [117]-[118], [130])