Sufficiency of description and drafting rules

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Chapter 1. Sufficiency of description

Section 1.1. Principle

A patent / application must state "the invention in a manner sufficiently clear and complete for a person skilled in the art to be able to execute it” (L613-25 CPI / L612-5 CPI).

This is the counterpart of the granting of the monopoly: the applicant must enrich the state of the art with a feasible invention.

Section 1.2. Appreciation date

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.

Section 1.3. Criteria of appreciation

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 fiber "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 characteristic "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).

Section 1.4. Embodiments described

1.4.1. 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 ...

1.4.2. 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).

Section 1.5. 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).

Section 1.6. Prejudiced prejudice

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).

Chapter 2. Rules for writing the description

Section 2.1. Technical area

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.

Section 2.2. 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.

Section 2.3. 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 °).

Section 2.4. Description of the drawings

In addition, the drawings should be described (R612-12 CPI, 4 °), all the references of these drawings must be found in the description (Order of 19 September 1979, Article 13).

Section 2.5. 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).

Section 2.6. Industrial application

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.

Chapter 3. Deposit of biological material

Section 3.1. Introduction

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.

Section 3.2. 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
    • reproducible.

Section 3.3. 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);
    • on the filing date (R612-24 CPI);
    • authorized depositary authorities are appointed by the Director General of the INPI (R612-25 CPIlast paragraph).
  • 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 °);
    • in a delay of 16 months from the earliest priority date (R612-24 CPIFourth paragraph);
    • but, in any case, at the latest at the time of the application for advance publication demand (R612-24 CPI, 4th paragraph together L612-21 CPI).

Section 3.4. 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).

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