Recently, at an appeal hearing, the following question was asked by the reporting magistrate: “but isn’t the claimed product the invention?” The answer could seem obvious, but perhaps it is not so evident. It deserves some thought.
What is claimed is not necessarily the invention. As stated in Articles 69 and 84 of the EPC, the claims define the subject matter of protection. And they must be interpreted in accordance with the description and drawings of the patent.
However, the invention does not necessarily match with what has been protected. This may correspond to a specific embodiment of the invention, but not necessarily. Patent law indicates that patent protection can be granted for inventions to the extent that they are new, inventive and industrially applicable.
Patent law does not define what an invention is. Article 52 of the EPC only indicates that inventions in all fields of technology may be eligible for patent protection. It then goes on to state what does not constitute an invention and what requirements must be met for an invention to be protected by a patent. But the legislator does not define what an invention is.
However, the requirements of sufficiency of description and inventive step do refer to intention in articles 56 and 83 of the EPC. In these cases, the regulation states that an invention involves an inventive step if it is not obvious to a person skilled in the art having regard to the state of the art and that the invention must be described in the European patent application in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.
In this sense, the patent can be amended so that what is ultimately claimed, i.e. protected by the patent, corresponds to what is described in the patent. But the invention must be sufficiently described in the patent application for the skilled person to be able to analyse it and deduce from it the technical teaching that can be inferred from its contents. This is what the European Patent Office has come to call an instruction to the person skilled in the art on how to solve a particular technical problem using the particular technical means (G 1/19) of which the invention consists. And that instruction must already be present in the patent application. The content of that application must be sufficient to make the solution of the technical problem credible (plausible) through that patent application, read by the person to whom it is addressed, the person skilled in the art.
The subject matter of the claim does not necessarily has to be the invention. It will normally be a more or less extensive embodiment of the invention, which will already be in the application, or in the limitation that has been made during the course of the patent prosecution. And sometimes it may not even be that. What is claimed will not even correspond to the invention. In these cases, in which what is claimed does not match the invention, the patent may be revoked by the competent authorities.