T 0821/24 - Essential features and permitted generalisation

Key points

• The patent application was refused. The applicant appeals. The question is whether claim 1 is clear or lacks essential features.
• The Board: "The Board acknowledges that generalisation in claim drafting is permissible. However, even in a generalised form, an independent claim must still include all features essential to solving the (subjective) technical problem addressed by the application and to achieving the technical effect relied upon, across the whole breadth of the claim. If the claim, by virtue of its general wording, encompasses embodiments that do not achieve that effect or solve the problem, its scope is not clear. In line with established case law of the Boards of Appeal, the claim does not meet the requirements of Article 84 EPC "
• I'm not entirely sure in what sense the term 'technical effect' is used here.
• "The overarching principle is that the applicant is entitled to protection only for the invention disclosed. "The invention", however, is necessarily linked to the solution of a technical problem with reference to the pertinent background art as addressed in or at least understandable from the application, as required by Rule 42(1)(c) EPC. Accordingly, claim generalisation cannot extend to embodiments that do not solve that problem or achieve the stated technical effect, since such embodiments do not belong to "the invention" and thus cannot be the subject-matter of a claim. This basic principle sets the permissible limits for generalisation."
• "The Board notes that a claim must also be clear in itself. If the skilled person must rely on the description merely to work out, within a broadly generalised claim, which features actually achieve the technical problem with which the application is concerned, this indicates a lack of clarity under Article 84 EPC."

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t240821eu1