2. T 409/91 [1994] OJ EPO 653.
3. See Herbicides/ICI T 206/83 [1987] OJ EPO 5.
4. Amendments/Xerox T 133/85 [1988] OJ EPO 441. The issue of support and proper claim scope in the field of genetic engineering has caused something of a problem as a result of the degeneracy of the genetic code. Since the decision in Alpha interferon/Biogen T 301/87 [1990] OJ EPO 335, claims in the following format have been accepted:
A recombinant DNA molecule for use..., said recombinant DNA molecule comprising a DNA sequence selected from:
-
a) specified DNA sequences
- b) DNA sequences which hybridize to any of the specified sequences and
code for a defined polypeptide and
- c) DNA sequences which are degenerate as a result of the genetic code to the DNA sequences defined in (a) and (b) and which code for the defined polypeptide.
In other cases the DNA sequences of the material specified in the claim may not be known. In Plasmid pSG2/Hoechst (T162/86 [1988] OJ EPO 452), the Board pointed out significant difficulties in defining microbiological entities precisely. As for the case in question, it was held that the following claim met the necessary standards.
Plasmid pSG2, characterized in that it is obtainable from a culture of Streptomyces ghanaensis ATCC 14672, has a contour length of 4.58 micrometers and a molecular length of about 13.8 kilobases(kb)and in that it is not fragmented by (five specified) restriction endonucleases ... , but it is cleaved by (three other specified restriction endonucleases into fragments of various specified lengths).
The Board did, however, indicate that in other cases, fuller restriction site data might be needed.
5. The tougher view of what is required to support a claim as set out in the Exxon decision has been followed in a number of recent decisions including: Hexagonal liquid crystal gel/Unilever T 435/91 [1995] EPOR 314 ("disclosure of an invention is only sufficient if the skilled person can reasonably expect that substantially all embodiments of a claimed invention which this skilled person would envisage on the basis of the corresponding disclosure and the relevant common general knowledge can be put into practice, In other words, only exceptional failures can be tolerated.") and Dipeptides/Schering T 548/91 [1995] EPOR 327 ("the disclosure of limited ways of performing the invention can be considered to be sufficient within the meaning of Article 83 EPC if it allows the man skilled in the art to perform the invention in the whole range that is claimed" whether this is done must be determined on the balance of probabilities and in an opposition the burden of proof is on the opponent.
6. Interferon/Biogen [1990] OJ EPO 335
7. Toshiba/Semi-Conductor Device T 407/87 [1989] EPOR 470.
8. Decision T 171/84, [1986] OJ EPO 95.
9. T923/92 [1996] OJ EPO 564.
10. T552/91 [1995] OJ EPO 100 - replacement of the claims based on the formula by product by process claims was, however, permitted since the claim specified all necessary parameters to produce the compounds in question.
