Defining an invention solely in terms of a result to be achieved (colloquially termed "free beer" claiming) is a risky business and something that tends to prompt objections both at the EPO and UK IPO. When training to become a UK patent attorney, in my experience it is quite usual to practice drafting claim 1 using a combination of a few relevant structural features, something to define their relationship, and ending with some functional wording that defines what the purpose or result is. The functional type wording should ideally reveal or define the 'clever bit', i.e. the feature that would distinguish the claimed invention from whatever prior art turns out to be the closest. This doesn't always work though, because an examiner can find a closer piece of prior art than was known to the inventor at the time. However, when it does work it can result in a broader and potentially more useful patent claim.
Because functional claiming can raise objections, it is always a good idea to provide clear fallback positions to more definite features so that the result to be achieved can instead be defined in terms of how the result is achieved if this becomes needed during prosecution. Examiners will often insist on this, particularly at the EPO (see e.g. F-IV 4.10 of the Guidelines for Examination). In the UK, functional claiming tends to be slightly more acceptable, being allowable so long as the specification provides "enough instruction for the skilled person to be able to achieve the desired result without embarking on a research programme" (MPP 14.72). It is therefore fairly common for UK drafted patent applications to have more free beer than applications drafted from a more continental perspective . However, given that the EPO is now considered the usual standard to aim for, it may be less common than it used to be. Examiners at the UK IPO, being more aware of practice emanating from the EPO, may also tend to look upon functional claiming less favourably than they might have done in the past. The practice remains common, particularly among the older elements of the UK patent profession.
All that is an introduction to a recent decision (BL O/0369/26: Openfield) from the UK IPO regarding a UK patent application (GB2306083.3) defining an invention claimed partly in functional terms, and in which the functional part was the supposedly clever bit that distinguished it over the prior art. The latest version of claim 1 of the application reads as follows:
The claim defined a well logging tool of the type illustrated below (Figure 1 of the application), in which an articulated twin arm deployment arrangement would deploy by the arms hinging and extending away from the cylindrical body of the tool so that they then spanned the horizontal well bore. This enabled capacitive sensors along one of the arms to be positioned along the diameter of the bore to sense a level of water within the bore. The clever bit of the invention was to keep the capacitive sensors vertical as the arms were deployed, all other components of the claimed invention being already known. This bit, as shown in the highlighted part of claim 1 above, was defined purely in functional terms, i.e. without actually defining how the capacitance sensors were kept vertically aligned.
The examiner objected that the way the invention was claimed was unclear because it was defined by a result to be achieved and there was only one way the description showed how this would be done, which was by way of a pantographic mechanism (basically two hinged parallel bars). The claimed invention, in the examiner's view, was therefore not enabled across its whole scope (
Biogen insufficiency, referring also to
Novartis). The applicant's representative argued against this but didn't manage to win the examiner over, resulting in the case coming before a hearing officer.
The applicant's representative then argued before the hearing officer that there were other mechanisms discussed in the patent application, referring to the use of accelerometers, counterweights and pivots that could be used to keep the sensor elements vertical. While these were not actually disclosed in the application itself, the representative showed how such alternative mechanisms could work, referring to other patents and prior art documents. This appeared to persuade the hearing officer, who found that, while the specification defined only a single embodiment, the skilled person would be aware of various ways of implementing a mechanism to do the same thing. The skilled person would therefore be able to perform the invention over the whole scope of the claim without undue burden or effort, using their common general knowledge. The claims did not therefore need to be restricted to only the use of a pantographic mechanism.
The lesson from this appears to be that, at least before the UK IPO, it is possible to impart common general knowledge to the skilled person by referencing material outside of the patent application itself. This does, however, appear to be a risky move because the more the skilled person is deemed to know, the less likely the claimed invention will be considered to be inventive. Indeed, the application has now been remitted to the examiner to consider the question of inventive step. Perhaps the applicant will manage to carefully tread the line between sufficiency on the one side and inventive step on the other but it looks to me like it could now go either way on inventive step.
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