In case T 0092/21, the Board of Appeal (BoA) of the European Patent Office recently had to decide whether patent claims directed to a power plant are to be regarded as enabled under Art. 83 EPC, although, in the examining division’s view, some passages in the description hints at a claimed power plant that is not within the scope of physical laws and contradicts the first law of thermodynamics.
The BoA first clarified that a claim which is sufficiently enabled in the sense of Art. 83 EPC by its wording may not be considered as insufficiently enabled because the description contains doubtful passages. This was substantiated by the uniform use of the term “invention” in Articles 54 (novelty), 56 (inventive step) and 83 (enablement) of the EPC, so that only the invention defined in the claims is to be examined respectively.
The BoA then looked at the claims and figures in the patent application in a manner willing to understand them in a technically meaningful way. As a result, the BoA concluded that the implementation of the claimed power plant in practice does not require any considerations beyond technical knowledge, i.e., enablement within the meaning of Art. 83 EPC is given.
In other words: The possibility that claims according to the invention can be regarded as not enabled in view of the description to the disadvantage of the applicant has come to an end. In the case of doubtful passages in the description, only the wording of the claim counts, which is to be read by the skilled person with the willingness to understand it in a technically meaningful way.