skip to main content skip to accessibility policy

Articles & Updates – Details

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.

Bookmark and Share

Related Resources

Related People

Partner, Patent Attorney
News

Follow us

Newsletter subscriptions

In support of our environmental policy we encourage email subscriptions to receive our patent and trade mark newsletters as soon as they are published. Please send your contact details to subscriptions@dyoung.com.

For RSS users

Our RSS news feeds allow you to see when we have added new content to our website so you can get the latest site updates in one place, as soon as they are published.

Social media

Privacy Policy

We are committed to protecting and respecting your privacy. To understand our views and practices regarding your personal data and how we will treat it please see www.dyoung.com/privacypolicy