Claims shall be supported by description (Section 25(5)(c))

The technical contribution

5.83 In Biogen Inc v Medeva Plc [1996] UKHL 18, Lord Hoffmann noted that it is a longestablished principle of UK patent law that:

“… the specification must enable the invention to be performed to the full extent of the monopoly claimed. If the invention discloses a principle capable of general application, the claims may be in correspondingly general terms. The patentee need not show that he has proved its application in every individual instance. On the other hand, if the claims include a number of discrete methods or products, the patentee must enable the invention to be performed in respect of each of them.”

He further stated that:

“the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified.”

5.84 One means of identifying the technical contribution to the art is to determine what is new and non-obvious (Generics (UK) Limited and others v H Lundbeck A/S [2009] UKHL 12; [2009] RPC 13 at [30]). In this case, Lord Walker noted that the terms “inventive concept” and “technical contribution to the art” are not synonymous. In particular he noted that in Biogen, Lord Hoffmann used these expressions several times – “inventive concept” in relation to inventive step and “technical contribution in the art”. Lord Walker stated that:

“‘Inventive concept’ is concerned with the identification of the core (or kernel, or essence) of the invention – the idea or principle, of more or less general application (see Kirin-Amgen [2005] RPC 169 paras 112-113) which entitles the inventor’s achievement to be called inventive. The invention’s technical contribution to the art is concerned with the evaluation of its inventive concept – how far forward has it carried the state of the art? The inventive concept and the technical contribution may command equal respect but that will not always be the case.”

5.85 In Biogen, Lord Hoffmann considered there is more than one way in which the breadth of the claim could exceed the technical contribution to the art of the invention (at paragraph 71):

“The patent may claim results which it does not enable, such as making a wide class of products when it enables only one of those products and discloses no principle which would enable others to be made. Or it may claim every way of achieving a result when it enables only one way and it is possible to envisage other ways of achieving that result which makes no use of the invention.”

5.86 Thus, in general lack of support may be a consideration in the following situations:

(1) the description does not provide sufficient enablement across the full scope of the claims. This is likely to be an issue where the claim is so broad as to include a number of alternative products and there is no apparent principle of general application;

(2) the claims encompass other matter that is unconnected to the invention. This was expressed in Biogen as:

“it is not whether the claimed invention could deliver the goods, but whether the claims cover other ways in which they might be delivered: ways which owe nothing to the teaching of the patent or any principle which it disclosed.”

(3) the invention is defined in terms of a desired result or known goal, butthe invention lies in the particular means by which that goal has been achieved.

(4) there is a serious inconsistency between the claims and description in as much as the claims lack an essential feature of the invention.