29 July 2010

EPO Case G 2/10 - New Referral to Enlarged Board of Appeal: Allowability of Certain Disclaimers

EPO Case G 2/10 - New Referral to Enlarged Board of Appeal: Allowability of Certain Disclaimers

The following question has been referred to the EPO’s Enlarged Board of Appeal (EBA):

'Does a disclaimer infringe Article 123(2) EPC if its subject-matter was disclosed as an embodiment of the invention in the application as filed?'

Article 123(2) EPC relates to the prohibition on adding matter to the disclosure in an application as filed.

Clearly when a disclaimer is specifically present in the application as filed, an objection under Article 123(2) EPC should not arise. Moreover, guidance was given in previous EBA decisions (G 1/03 and G 2/03) in relation to the allowability of disclaimers which were not foreshadowed in the application as filed. Decisions G 1/03 and G 2/03 found that a previously 'undisclosed' disclaimer may be allowable in order to:

• restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC, ie, a novelty only citation;
• restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC - an anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention; and
• disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons.

In decision T1068/07, which lead to the current referral, the Board of Appeal noted that different opinions had been expressed in the jurisprudence of the Boards of Appeal on whether the findings of G 1/03 and G 2/03 related also to the disclaiming of embodiments which are disclosed in the application as filed as part of the invention, ie, whether the situations set out in decisions G 1/03 and G 2/03 represented a definitive list of the situations where an 'undisclosed' disclaimer could be used.

We will keep you informed of developments in this matter.