This is the counterpart of the granting of the monopoly: the applicant must enrich the state of the art with a feasible invention.
It is appropriate to assess the sufficiency of description at the date of filing of the application (Paris District Court, 3rd Division, 1st Sect., April 7, 2009) by replacing the man of the trade with the knowledge of the time.
The skilled person must use the description and drawings to be able to implement the claimed invention (C. Cass. com., March 20, 2007, No. 05-12626): if only the drawings define the invention and that these allow to realize the invention, then the invention will be sufficiently described (C. Cass. com., April 7, 1965, No. 61-13,592).
In order to assess the sufficiency of the description, it should be considered that a person skilled in the art may fill in certain gaps in the description ' using his theoretical and practical professional knowledge, without having to provide an inventive effort beyond his ordinary skills »(Paris District Court, 3rd Chamber, 3rd Sect., May 2, 2014, IMV Technologies c. Ecopor et al) by going beyond mere implementing measures (Court of Appeal of Paris, Pole 5, 1st ch., September 9, 2014).
There is a lack of description if a claim contains a functional characteristic (eg glass fibers' which have no carcinogenic properties"), But this characteristic is not defined in the description (eg precise definition, reference to a standard ...) (Court of Appeal of Paris, Pole 5, 2nd chapter, May 16, 2014). The same will apply to a feature "adapted for" if no indication is given in the description of how to determine it (Court of Appeal of Paris, Pole 5, 2nd chapter, March 21, 2014).
The fact of reproducing in the description the claimed characteristic, without further detail, does not make it possible, most often, to satisfy the requirement of the sufficiency of description (Court of Appeal of Paris, 4th ch., Sect. B, March 8, 2005)
It is not important that the description contain errors, as long as the skilled person is able to correct them simply by the description or his general knowledge (Court of Appeal of Paris, 4th ch., Sect. B, September 28, 2001 or Court of Appeal of Paris, 4th ch., Sect. B, April 25, 2003).
At least one mode described?
The only requirement is the fact that one skilled in the art can realize the invention. Therefore, there is no legal obligation to describe even a single embodiment (Paris District Court, c. 03, April 8, 1998), even if it helps ...
Some missing aspects
The fact that an embodiment is dangerous, but that this is not indicated by the patent application is inoperative (Paris District Court, 3rd Division, 3rd Sect., June 29, 2012).
Incorporation by reference
A reference to a precise and easily accessible document can validate the criterion of sufficiency of description (District Court of Lille, 1st c., 15 March 2007).
If the plaintiff submits that his invention defeats a prejudice, the Examination Division will be even more demanding concerning the description of the invention (T419 / 12).
Description writing rules
The description includes an indication of the technical area of the invention (R612-12 CPI, 1 °).
Most often this area is indicated in the first sentence of the description.
State of the art
The state of the art cited in the application is that known to the applicant at the time of filing (R612-12 CPI, 2 °).
Contrary to the European practice, the INPI does not ask to modify the description to reveal the documents mentioned in the preliminary research report.
Description of the invention
The description includes a part incorporating the claims and showing, if possible, the advantages of the characteristics exhibited (R612-12 CPI, 3 °).
Description of the drawings
Description of at least one embodiment
The description must detail at least one embodiment (R612-12 CPI, 5 °), nevertheless, the fact that this requirement is not fulfilled is not a reason to cancel the request for lack of description (Paris District Court, c. 03, April 8, 1998).
It is necessary to indicate the industrial application of the application (R612-12 CPI, 6 °).
Most often this industrial application is deduced directly from the demand and it is not necessary to indicate it explicitly.
Deposit of biological material
This theme is addressed here because, even though it is not exactly part of the description, the deposition of biological material is a key element for the sufficiency of description.
Definition of biological material
Biological material is the material that (L611-10 CPI):
- contains genetic information;
- and is, in a biological system:
- self-reproducible or
Conditions to be fulfilled
Where an invention involving a biological material can not be described in the application so as to enable a person skilled in the art to carry out the invention, its description is considered sufficient only if the biological material has been the subject of a deposit (L612-5 CPIparagraph 2).
In order to fulfill the requirement of sufficiency of description, it is necessary:
- one sample of the biological material was deposited from an authorized depositary authority (L612-5 CPIparagraph 2);
- that demand contains the relevant information the applicant has on the characteristics of the biological material (R612-24 CPI, 1 °);
- for the deposited biological material, the indication of thedepositary authority and as well as number order (R612-24 CPI, 2 °);
Access to biological material
Normally, from the publication of the patent application, the biological material is accessible to any person who requests it.
Nevertheless, the applicant may request, before the end of the technical preparations for publication, for access to be made via an expert (see Request for Grant form).