Sufficiency of Disclosure

Principle

A patent / application must disclose « the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art » (L613-25 IPC / L612-5 IPC).

This is the counterpart to the grant of the monopoly: the applicant must enrich the state of the art with a reproducible invention.

Assessment Date

The sufficiency of disclosure must be assessed as of the filing date of the application (Regional Court of Paris, 3rd Chamber, 1st Section, 7 April 2009) by placing the person skilled in the art in the context of the knowledge available at that time.

Assessment Criterion

The person skilled in the art must be able to rely on the description and drawings to carry out the claimed invention (French Supreme Court, Commercial Chamber, 20 March 2007, No. 05-12626): if only the drawings define the invention and these allow the invention to be carried out, then the invention will be sufficiently disclosed (French Supreme Court, Commercial Chamber, 7 April 1965, No. 61-13 592).

To assess the sufficiency of the disclosure, it should be considered that the person skilled in the art may fill certain gaps in the description « by using their theoretical and practical professional knowledge, without having to make an inventive effort beyond their ordinary skills » (Regional Court of Paris, 3rd Chamber, 3rd Section, 2 May 2014, IMV Technologies v. Ecopor et al.) by going beyond mere implementation steps (Paris Court of Appeal, Division 5, 1st Chamber, 9 September 2014).

There is insufficient disclosure if a claim contains a functional feature (e.g., glass fibers « that are free from carcinogenic properties« ), but this feature is not defined in the description (e.g., precise definition, reference to a standard, etc.) (Paris Court of Appeal, Division 5, 2nd Chamber, 16 May 2014). The same applies to a feature described as « adapted for » if no indication is given in the description as to how to determine it (Paris Court of Appeal, Division 5, 2nd Chamber, 21 March 2014).

Simply reproducing the claimed feature in the description, without further detail, generally does not satisfy the requirement for sufficiency of disclosure (Paris Court of Appeal, 4th Chamber, Section B, 8 March 2005).

It is not critical if the description contains errors, as long as the person skilled in the art is able to correct them easily using the description or their general knowledge (Paris Court of Appeal, 4th Chamber, Section B, 28 September 2001 or Paris Court of Appeal, 4th Chamber, Section B, 25 April 2003).

Described Embodiments

At least one embodiment described?

The only requirement is that the person skilled in the art can carry out the invention. Therefore, there is no legal obligation to describe even a single embodiment (Regional Court of Paris, 3rd Chamber, 8 April 1998), although it helps…

Missing aspects

The fact that an embodiment is hazardous but this is not indicated in the patent application is irrelevant (Regional Court of Paris, 3rd Chamber, 3rd Section, 29 June 2012).

Incorporation by Reference

A reference to a specific and easily accessible document may satisfy the sufficiency of disclosure requirement (Regional Court of Lille, 1st Chamber, 15 March 2007).

Overcoming a Prejudice

If the applicant asserts that their invention overcomes a prejudice, the Examination Division will be particularly stringent regarding the description of the invention (T419/12).

Drafting Rules for the Description

Technical Field

The description includes an indication of the technical field of the invention (R612-12 CPI, 1°).

Most often, this field is indicated in the first sentence of the description.

State of the Art

The prior art cited in the application is that known to the applicant at the time of filing (R612-12 CPI, 2°).

Unlike European practice, the INPI does not require the description to be amended to include documents cited in the preliminary search report.

Description of the Invention

The description includes a section reproducing the claims and, where possible, explaining the advantages of the disclosed features (R612-12 CPI, 3°).

Description of the Drawings

Additionally, the drawings must be described (R612-12 CPI, 4°), with all references in these drawings appearing in the description (Arrêté of September 19, 1979, Article 13).

Description of at Least One Embodiment

The description must detail at least one embodiment (R612-12 CPI, 5°). However, the failure to meet this requirement is not grounds for invalidating the application for insufficient disclosure (Tribunal de Grande Instance de Paris, ch. 03, April 8, 1998).

Industrial Application

The industrial application of the application must be indicated (R612-12 CPI, 6°).

Most often, this industrial application can be directly inferred from the application, and it is not necessary to state it explicitly.

Deposit of Biological Material

Introduction

This topic is addressed here because, although it is not strictly part of the description, the deposit of biological material is a key element for sufficiency of disclosure.

Definition of Biological Material

Biological material is material that (L611-10 CPI):

  • contains genetic information;
  • and is, in a biological system:
    • self-reproducible or
    • reproducible.

Requirements to be met

Where an invention involving biological material cannot be described in the application in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, the description shall only be considered sufficient if the biological material has been deposited (L612-5 CPI, paragraph 2).

To meet the requirement of sufficient disclosure, the following must be satisfied:

  • a sample of the biological material has been deposited with a recognized depositary authority (L612-5 CPI, paragraph 2);
    • by the filing date (R612-24 CPI);
    • recognized depositary authorities are designated by the Director General of the INPI (R612-25 CPI, last paragraph).
  • the application contains the relevant information available to the applicant on the characteristics of the biological material (R612-24 CPI, 1°);
  • for the deposited biological material, the indication of the depositary authority as well as the accession number is provided (R612-24 CPI, 2°);
    • within a period of 16 months from the earliest priority date (R612-24 CPI, 4th paragraph);
    • but, in any event, no later than upon request for early publication of the application (R612-24 CPI, 4th paragraph in conjunction with L612-21 CPI).

Access to the biological material

Normally, as from the publication of the patent application, the biological material is available to any person requesting it.

However, before completion of the technical preparations for publication, the depositor may request that access be provided only through an expert (see the request form for release).