Undisclosed disclaimers - Enlarged Board of Appeal

Typically, when a claim is amended to overcome a prior art objection additional features are added to narrow the scope of the claim, ie, a positive limitation is provided. However, in some circumstances this is not possible, and it is necessary to add a negative limitation, a disclaimer, to exclude some subject-matter from the scope of the claim.

Amendments to patent applications must comply with Article 123(2) EPC, specifically they must not contain subject-matter which extends beyond the content of the application as filed. Any amendment must be directly and unambiguously derivable from the application as filed.

How disclaimers are considered in the context of Article 123(2) EPC has previously been reviewed by the Enlarged Board of Appeal in decisions G 1/03 and G 2/10.

Enlarged Board of Appeal decision G 1/03

G 1/03 held that a disclaimer which is not disclosed in the application as filed, referred to as an "undisclosed disclaimer", may be allowable in certain circumstances, namely in order to:

1. restore novelty by delimiting a claim against state of the art under Article 54(3) EPC, ie, another European patent application that was filed earlier than, but not published until after, your application
2. restore novelty by delimiting a claim against an accidental anticipation from a document in an unrelated technical field; and
3. disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons.

Thus G 1/03 provided some exceptions to the general principle that an amendment must be directly and unambiguously derivable from the application as filed.

Enlarged Board of Appeal decision G 2/10

Subsequent decision G 2/10 related to disclaimers, but in this case disclaimers of subject-matter that was originally disclosed in the application as an embodiment of the invention, so-called "disclosed disclaimers".

In G 2/10 the Enlarged Board held: "An amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed infringes Article 123(2) EPC if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed."

As pointed out in point 4.3 of this decision, this has now become the 'gold standard' for assessing any amendment for its compliance with Article 123(2) EPC.

Board of Appeal decision T 437/14

In recent Board of Appeal Decision T 437/14, the Board noted that if the 'gold standard' mentioned in G 2/10 is to be applied to any amendment, there is a potential conflict with the allowability of undisclosed disclaimers in accordance with G 1/03. Therefore, the following questions were referred to the Enlarged Board of Appeal:

1. Is the standard referred to in G 2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC, ie, whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed, also to be applied to claims containing undisclosed disclaimers?
2. If the answer to the first question is yes, is G 1/03 set aside as regards the exceptions relating to undisclosed disclaimers defined in its answer 2.1? [see footnote 1 below]
3. If the answer to the second question is no, ie, if the exceptions relating to undisclosed disclaimers defined in answer 2.1 of G 1/03 apply in addition to the standard referred to in G 2/10, may this standard be modified in view of these exceptions?

We shall be monitoring the outcome of this case with interest. The possibilities for amendment of European patent applications will be restricted if the Enlarged Board of Appeal decides that undisclosed disclaimers are no longer available.

Footnote

1. Answer 2.1 of G 1/03 (08 April 2004):

"2.1 A 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;
• 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."

Useful links

• G 1/03: http://dycip.com/epog103
• G 2/10: http://dycip.com/pdfg210
• T 437/14: http://dycip.com/T043714