Worldwide: The "State Of The Possible"

Last Updated: 4 November 2019
Article by Phillips & Leigh

Under most patent laws, in exchange for a time limited monopoly for an invention, a patent applicant must provide a full enough disclosure of the invention to enable the invention to be put into effect. This concept is often referred to as the patent bargain.

The concept of a "sufficient" disclosure or an "enabling" disclosure is found in the laws of many countries, but what constitutes such a disclosure may vary by country.

Under European law the test for whether a patent discloses enough is whether it "disclose(s) the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art" [Article 83 European Patent Convention]. This is interpreted as meaning not that the patent application has to provide a blueprint for the invention, that can be slavishly followed with guarantee of success: but that the skilled person with a reasonable degree of experimentation can put it into effect. The extent of experimentation that is acceptable will vary according circumstance, but it is established case law that "It is not the purpose of the patent system to grant a monopoly for technical speculations that cannot be realised at the time of filing" [Case T1164/11]. A patent for mere speculation fails to provide the patentee's half of the patent bargain.

It is also the case that a lack of sufficient disclosure may make a disclosure useless as prior art "a document normally forms part of the state of the art, even if its disclosure is deficient, unless it can unequivocally be proven that the disclosure of the document is not enabling, ....... Such a non-enabling ...... disclosure should then not be considered part of the state of the art" [Case T230/01]

So it is of interest that we see a patent recently granted by the US Patent Office, US 10,144,532 B2, and the reports that this has received.

The technology involved relates to "A craft using an inertial mass reduction device", phrasing guaranteed to pique the interest of UFO aficionados, though for the purpose of this article we will concentrate on the legal arguments raised in the case.

In prosecution the applicants wrote to the examiner:-

  • stating that "I agree with your main point that this mode of acceleration/movement is beyond the state of the possible, at least at present"
  • stating that work is being done to prove the invention that if successful would "…demonstrate that this patent documents the future state of the possible...".
  • encouraging the examiner to grant the case, lest the US end up "paying forever more" to use the technology in question, raising the spectre of Chinese competitors arriving at the technology first and patenting it out from under the nose of the US Navy.

In Europe the statement that the proposed invention is beyond the state of the possible, and that the application merely documents what might become possible should intended experiments have the results the applicant hoped for, would have been highly likely to result in refusal. A way out could be found if the "beyond the state of the possible" phrasing could be argued to be a slip of the pen. However, one would still need to show that the specification provided a route map that could be followed with a reasonable expectation of success in achieving the claimed results without undue experimentation.

As mentioned above, the point of enablement is that it must be possible for the "skilled person" to put the invention into effect using the information in the patent.

The "skilled person" or "person skilled in the art", for the purposes of European and UK patent law, is a legal construct whose particular skills vary depending on the specifics of the case. They are held to be competent in the technical field of the invention at hand, have knowledge of the prior art and common general knowledge in that field, but are incapable of undertaking actual inventive activity themselves. Routine laboratory workbench alterations and optimisations are held to be within their remit; non-routine experimentation and inventive activity generally isn't.

The letter submitted in US prosecution states that the inventor is undertaking a series of experiments to attempt to reach the desired objective and that "Based on these initial findings I would assert that this will become a reality"; this is based solely on the expected results of tests yet to be performed. On the face of it, this would seem to involve more inventive work than the skilled person is held to be capable of under UK or European law. That which is beyond the realm of the possible is beyond the reach of the skilled person.

As for the fear that the US might end up "paying forever more" for this technology: patents generally last 20 years or so from filing, and are then only an impediment if they have a sufficient disclosure. In fact, an application which does not provide an enabling disclosure would not prevent the scenario of China patenting out the technology from under the US Navy.

In European practice, insufficiency is one of the grounds for revocation of patents before national courts, and is one of the grounds for opposition before the European Patent Office. The EPO's opposition procedure, available for nine months after a patent comes to grant, is a fairly cost-effective means of seeking the limitation or revocation of a granted European patent on a centralised basis, with effect in every jurisdiction in which the European patent is validated.

Even supposing that a European examiner were persuaded to overlook the sufficiency issues previously raised, the end result would be a European patent which had this intrinsic vulnerability still present. One could imagine then a scenario in which the US Navy's Chinese competitors could then:

  • File an opposition before the EPO on the basis of lack of sufficiency of the US Navy's patent (or, if it is too late for the opposition process, seek revocation in national courts). The applicant's letter would provide them with an excellent start to a case; they could also undertake experiments in which skilled personnel attempted to follow the instructions as provided in the US Navy's patent. In the event that those experiments failed to produce the results claimed, the US Navy would need to point out some way in which the experiments made an error, failed to notice some information provided in the patent, or didn't undertake some simple act of workbench calibration or fine-tuning within the scope of the skilled person's abilities in order to get the experiment to work. Failing this, the US Navy patent would likely be revoked.
  • File their own application for the technology, providing a sufficient enabling disclosure. The published US Navy application, if it indeed lacks the crucial information needed to put the invention into effect, would not be effective prior art against this.

Were the Chinese competitor's application to be granted, they would then have enforceable rights over the technology within the jurisdictions it was maintained in for as long as they kept the patent alive through payment of renewals or until 20 years after the filing date – a situation much like that the applicant was concerned about in the US Navy case.

For the purposes of the UK and Europe at least, we advise clients to judge the timing of patent applications carefully. Whilst filing too late may mean competitors beat you to the punch, filing too early – before you have the information in hand to provide a fully enabling disclosure – can result in a waste of time and money on your part and, in a worst case scenario, may result in you giving ideas to others who may file patents with an enabling disclosure.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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