Legal framework
Under Article 83 EPC, a European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by the skilled person.
The sufficiency requirement must be met on the filing date. If essential technical information is missing from the application as filed, the applicant cannot normally cure the defect by adding that information later, because amendments must not add subject-matter extending beyond the content of the application as filed: Article 123(2) EPC. The Guidelines state this expressly in F-III, 2.
However, if the deficiency affects only some embodiments, it may be possible to overcome the objection by restricting the claims to the sufficiently disclosed embodiments and deleting the insufficiently disclosed embodiments from the description: Guidelines F-III, 2.
Statement a)
False.
The embodiment X1 lacks essential technical information and is therefore not sufficiently disclosed. The missing information cannot simply be supplied later as additional technical information.
Adding such information would normally introduce subject-matter which was not present in the application as filed. This would contravene Article 123(2) EPC, which prohibits amendments extending beyond the content of the application as filed. The Guidelines confirm that a seriously insufficient disclosure cannot subsequently be remedied by adding further examples or features: Guidelines F-III, 2.
The correct solution, where possible, is not to add the missing information, but to restrict the claims to the sufficiently disclosed embodiments and delete the insufficient embodiment.
Statement b)
True.
If the Article 83 EPC objection concerning X1 is not overcome, the application may be refused.
Under Article 97(2) EPC, the examining division refuses the application if it considers that the European patent application or the invention to which it relates does not meet the requirements of the EPC, unless the EPC provides a different legal consequence.
Thus, if the claims still cover embodiment X1 and that embodiment is not sufficiently disclosed, refusal may follow.
Statement c)
False.
The absence of an Article 83 EPC objection during examination does not prevent an opponent from relying on insufficiency after grant.
Lack of sufficiency of disclosure is expressly a ground for opposition under Article 100(b) EPC: opposition may be filed on the ground that the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by the skilled person.
Therefore, even if the examining division raises no sufficiency objection, Article 100(b) EPC remains a valid ground for opposition against the granted patent.
Statement d)
False.
Rule 139 EPC is not a general mechanism for adding missing technical information. It allows correction of linguistic errors, transcription errors and mistakes in documents filed with the EPO. Where the correction concerns the description, claims or drawings, the correction must be obvious, meaning that it must be immediately evident that nothing else could have been intended than the proposed correction.
The Guidelines further state that both the error and the correction must be immediately evident from the application documents as originally filed, using common general knowledge: Guidelines H-VI, 2.2.1.
Here, X1 lacks essential technical information. If the missing information were immediately and unambiguously derivable, there would normally be no insufficiency problem. If it is not derivable, it cannot be introduced by way of Rule 139 EPC. The statement is therefore false.
Note on publication
EP-T will in principle be published with the application documents as filed. Rule 68(1) EPC provides that publication of the European patent application contains the description, claims and drawings as filed, together with the abstract.
Exam tip
For Article 83 EPC, ask whether the skilled person could carry out the invention from the application as filed. If the answer is no because essential technical information is missing, the defect cannot be fixed by adding that information later. Look instead for possible claim restriction and deletion of the insufficient embodiment. Rule 139 EPC is only for obvious corrections, not for completing an insufficient disclosure.
Legal Disclaimer
The information provided in this post is for general informational purposes only and does not constitute legal advice. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.