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EPO – EBA decides on undisclosed and disclosed disclaimers

20 Dec 2017

EPO, Enlarged Board of Appeal, decision of December 18, 2017 in case G 1/16 – Disclaimer III, to be published in OJ EPO

In its decision T 437/14 (OJ EPO 2017, A50), Technical Board of Appeal 3.3.09 had referred 3 questions to the Enlarged Board of Appeal (EBA) concerning the proper standard to be applied for examining a claim amendment by the introduction of an undisclosed disclaimer. The questions resulted from case law differently interpreting the relation between decision G 1/03 and G 2/03 (OJ EPO 2004, 413 and 448) on undisclosed disclaimers on the one hand and G 2/10 (OJ EPO 2012, 376) on disclosed disclaimers on the other hand. The EBA answered the questions as follows:

For the purpose of considering whether a claim amended by the introduction of an undisclosed disclaimer is allowable under Article 123(2) EPC, the disclaimer must fulfil one of the criteria set out in point 2.1 of the order of decision G 1/03.

The introduction of such a disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular, it may not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure. The disclaimer may not remove more than necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.

At the outset, the EBA analyses the earlier decisions G 1/03 and G 2/10. A disclaimer is defined as the incorporation of a negative technical feature, typically excluding from a generally defined subject-matter specific embodiments or areas. The term undisclosed disclaimer relates to the situation in which neither the disclaimer itself nor the subject-matter excluded by it have been disclosed in the application as filed. A disclosed disclaimer either introduces an originally disclosed negative feature or the exclusion of the subject-matter has a basis in the original application, e.g. in a specific embodiment.

As already in G 2/10, the EBA again confirms the “gold standard” for assessing added-subject matter according to which any amendment can only be made within the limits of what a person skilled in the art would derive directly and unambiguously, using common general knowledge and seen objectively and relative to the filing date, from the whole of the documents of the application as filed. Thus, the gold standard is applicable to undisclosed as well as to disclosed disclaimers.

In its review of case law after G 2/10, the decision identifies 4 different approaches in assessing the relevance of G 2/10 for undisclosed disclaimers. The only test accepted by the EBA for examining the allowability of an undisclosed disclaimer for compliance with Article 123 (2) EPC is the test based on G 1/03, i.e.:

– Is the disclaimer introduced to restore novelty over a conflicting application within the meaning of Article 54 (3) EPC,
– or to restore novelty over an accidental anticipation,
– or to disclaim subject-matter which is excluded from patentability for non-technical reasons, and
– is the disclaimer not related to the teaching of the invention.

As to the latter aspect, the EBA adds that the relevant question to be asked is not whether an undisclosed disclaimer quantitatively reduces the original technical teaching, which is unavoidable, but rather whether it qualitatively changes it in the sense that the applicant’s or proprietor’s position with regard to other requirements for patentability is improved. According to the EBA, this means in practical terms that the evaluation of inventive step has to be carried out disregarding the undisclosed disclaimer.

The EBA overrules a series of decisions depriving the applicant or proprietor of the possibility of limiting his claims in situations in which the amendment typically has nothing to do with requirements for patentability. By basing the assessment to be made on the technical teaching of the original application, as already stated in G 1/03, the decision resolves the alleged conflict between G 1/03 and G 2/10. In addition, it is a treasure trove of relevant decisions of the Boards of Appeal and national courts.

A copy of the decision can be read here.

Reported by: Rudolf Teschemacher