National decisions - Inherent features and implicit disclosure

Federal Court of Justice of 14 August 2012 (X ZR 3/10) – Non-UV-sensitive printing plate
OJ 2015, Suppl. 2, IV

Key point

• In case a priority document discloses an embodiment with an inherent feature, this document anticipates, but does not disclose the subject-matter of a claim specifying that feature.

EPO summary of the decision

According to the Court's established case law, the skilled person has to be able to derive the claimed technical teaching – "directly and unambiguously" – from the original documents as a possible embodiment of the invention. Where an element of the teaching in a citation (here: D1) was characterised by a feature enabling the skilled person to select embodiments suitable for achieving the desired effect (here: lack of photosensitivity to ultraviolet light), but which was not clearly disclosed in the priority document (here: D1.1, D1.2), there is a lack of disclosure in the subsequent application if that property, even though, from an objective point of view, it was also a feature of an embodiment disclosed in the priority document, was at least not readily apparent to the skilled person. As an aside, the Court observed that this reasoning also applied to the ground of revocation of subject-matter extending beyond the content of the application (inadmissible extension: cf. Federal Court of Justice of 17 July 2012 – Polymer foam).

The Court also observed that, to avoid unreasonably restricting applicants in drawing on disclosure, it had allowed generalisations of originally disclosed embodiments. However, such generalisations are not considered admissible where the more general form is characterised by a feature not actually mentioned or not readily apparent to the skilled person. No other test can be applied in the assessment of priority. It is therefore not sufficient by itself that this feature becomes apparent when a disclosed embodiment is reproduced.

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