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Before G 1/03 and G 2/03, undisclosed disclaimers had been widely accepted by the Technical Boards, although there was variation in the conditions and circumstances under which undisclosed disclaimers were allowed.
This practice had been fundamentally called into question by T 323/97, which treated disclaimers as any other amendment, and thus required that the undisclosed disclaimer must find basis in the original application as-filed (which is, by definition, never the case).
The referring decisions of G 1/03 and G 2/03 (T 507/99 and T 451/99) seeked clarification regarding the conditions and circumstances under which undisclosed disclaimers are to be admitted.
The Enlarged Board of Appeals considered various arguments advanced by the referring decisions, by the President of the EPO and by the public. The most far-reaching argument, according to which a disclaimer is nothing but a voluntary restriction of the claim, and therefore not a technical feature, which could thus not infringe Art. 123(2), was rejected. Any amendment to a claim was considered to have a technical meaning, otherwise the amendment would be useless.
1. Undisclosed disclaimers to establish novelty over Art. 54(3) prior art
The Enlarged Board went on to analyse the motivation of Technical Boards which had previously allowed undisclosed disclaimers to establish novelty over post-published prior art under Art. 54(3) (also called "prior rights"). The Enlarged Board considered that prior art under Art. 54(3) intrinsically poses a problem, because the applicant cannot know the content of such prior art, when he files his application. It would thus be somewhat unfair not to allow the applicant to react to the publication of the 54(3) document by excluding subject matter disclosed therein. The Enlarged Board also reviewed the manner in which the national patent systems dealt with "prior rights" (e.g., the "prior claim approach" vs. "whole contents approach") and noted that the EPC chose to use the stricter "whole contents approach", under which the whole content of the Art. 54(3) document could be held against the later application. In exchange, the applicant of the later application should be allowed some room to maneuver, in cases where such unexpected 54(3) documents showed up.
Taking various other aspects into account, the Enlarged Board finally found that undisclosed disclaimers establishing novelty over Art. 54(3) prior art are admissible, because the disclaimer is introduced for legal reasons only, and does not change the technical teaching (reasons 2.1.3).
2. Undisclosed disclaimers to avoid "accidental anticipation"
The Board also found it appropriate that undisclosed disclaimers are allowed, if the disclaimer served to save the claim from "accidental anticipation", i.e., from anticipation by a document which is, although novelty-destroying, so unrelated and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention.
3. Undisclosed disclaimers to exclude subject matter excluded from patentability for non-technical reasons
A third group of circumstances under which the introduction of undisclosed disclaimers was held admissible covers cases, in which the claim covers subject matter excluded from patentablity for non-technical reasons, such as the medical methods of Art. 53(c), or inventions contrary to "ordre public" or morality of Art. 53(a). Also here, undisclosed disclaimers were allowed.
4. Futher conditions to be met for undisclosed disclaimers to be admissible
As further conditions to be met for an undisclosed disclaimer to be admissible, the Enlarged Board stated that the disclaimer should not remove more than necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.
The disclaimer must also not become relevant for the assessment of inventive step or sufficiency of disclosure. Otherwise it would obviously change the technical teaching of the application and thus add subject-matter contrary to Article 123(2) EPC.
The amended claim containing the disclaimer must be clear and concise, as required by Art. 84 EPC.
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Headnote:
I. An amendment to a claim by the introduction of a disclaimer may not be refused under Article 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed.
II. The following criteria are to be applied for assessing the allowability of a disclaimer which is not disclosed in the application as filed:
II.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.
II.2 A disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.
II.3 A disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to Article 123(2) EPC.
II.4 A claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC.
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