EPO, Technical Board of Appeal 3.3.09, T 437/14, decision of October 17, 2016, to be published in OJ EPO   – The Trustees of Princeton University et al. v. Merck Patent GmbH et al.

The reported decision referred the following point of law to the Enlarged Board of Appeal (EBA):

1. Is the standard referred to in G 2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC, i.e. 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?

3. If the answer to the second question is no, i.e. 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?

The referring Board analyzes the EBA’s previous decisions G 1/03 and G 2/10. The Board concedes that both decisions deal with different factual situation, namely G 1/03 with undisclosed disclaimers in order to delimit a claim against a conflicting application or an accidental anticipation or in order to disclaim subject-matter that is excluded from patentability for non-technical reasons, whereas G 2/10 deals with disclaiming disclosed embodiments or ranges from generically defined claims.

However, the referring Board concludes from G 2/10 that there is only one standard for assessing added subject-matter under Article 123 (2) EPC, labelled in G 2/10 as the gold standard, according to which the skilled person, using common general knowledge, would regard the claim as amended as explicitly or implicitly, but directly and unambiguously disclosed in the application as filed. According to the referring Board, this leaves no room for the exceptions defined in G 1/03. Only if the gold standard is met would the disclaimer be allowable under Article 123 (2) EPC.  Since G 2/10 did not set aside G 1/03 with regard to the exceptions relating to undisclosed disclaimers this raised the questions referred to the EBA.

The referring Board has made clear its preference for overruling G 1/03. This would add another hurdle for the applicant or proprietor to overcome an objection he could not foresee when drafting the application. The inescapable trap, the prohibition of reformatio in peius and an increasingly rigid approach in assessing added subject-matter make it anyway difficult for the applicant or proprietor to react to objections in a promising way.

It seems worthwhile, when interpreting Article 123 (2) EPC, to consider in line with G 1/03 whether a skilled person is faced with new technical information if a limiting feature is added which is not related to the merits of an invention. The decisive question is not the distinction between disclosed and undisclosed disclaimers but whether the situations dealt with in G 1/03 justify an interpretation of added subject-matter resulting in a fair balance between the applicant or proprietor and the public.

A copy of the decision can be read here.