G 0001/03 - "Undisclosed" disclaimers - #4

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G 1/03 (together with G 2/03) defined under which conditions "undisclosed disclaimers" (i.e., disclaimers disclaiming subject matter where neither the disclaimer nor the subject-matter excluded by it have a basis in the application as filed) can be introduced into a claim without extending subject matter under Art. 123(2).

Prior to G 1/03 established case law allowed - under certain circumstances - disclaimers having no basis in the application as filed. This case law had been called into question in T 323/97, which held that the introduction of a negative feature into a claim resulting in the exclusion of certain embodiments was, regardless of the name "disclaimer", nonetheless an amendment governed by Article 123(2) and (3) EPC.

In particular the chemical industry had often relied on undisclosed disclaimers to establish novelty of their broad Markush-type claims over prior art that they had previously been unaware of; be it because the prior art was post-published under Art. 54(3), or be it because the prior art document was "accidental", e.g., from a far remote technical field.

The Enlarged Board looked into the situation concerning post-published Art. 54(3) documents. Considering the legislative history of Art. 54(3) they noted that the fathers of the EPC opted for the more restrictive "whole contents approach" rather than for the less stringent "prior claim approach", under which "hole contents approach" the whole content of a post-published 54(4) document is taken into account, rather than only its claims (point 2.1.1 of the reasons). They considered that the legislator tried to limit the detrimental effect of post-published 54(3) documents by making them only relevant with respect to novelty, not relevant with respect to inventive step (Art. 56, second sentence).

In line with this approach of limiting the negative effect of post-published prior art on subsequent patent applications (and patents), the Enlarged Board allowed the disclaiming of parts of the originally claimed scope, if the excluded subject matter was disclosed in a 54(3) document. This was justified as follows:

"Such a disclaimer, only excluding subject-matter for legal reasons, is required to give effect to Article 54(3) EPC and has no bearing on the technical information in the application. It is, therefore, not in contradiction to Article 123(2) EPC. Applied in this sense, the term disclaimer is justified also in its literal meaning. An invention comprising different specific embodiments or groups thereof has been disclosed in the application as filed, a part of which is excluded from the requested protection, ie no longer claimed. The remaining subject-matter is not modified by the disclaimer." (point 2.1.3 of the reasons)

For related reasons, the Enlarged Board also found it appropriate to allow undisclosed disclaimers in the case of "accidental anticipations" (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, see Headnote II.1). Since the applicant could not have been aware of the accidentally anticipating document, it would be appropriate to allow him to disclaim the accidentally disclosed subject matter, so as to make his claim new over the accidentally anticipating document (point 2.2 of the reasons).

Finally, the Enlarged Board found it appropriate to also allow undisclosed disclaimers in cases where a claim includes subject matter which is excluded from patentability under Art. 52-57 for non-technical reasons. The reasoning here was that a foreign applicant, who files a first application in his country (where certain subject matter, such as medical methods, is possibly not excluded from patentability) cannot be expected to know or to study the substantive patentability requirements of all countries in which he/she may later wish to claim the priority of his first application. The Enlarged Board stated:

"... the applicant cannot be expected to check the substantive patent law of all possible states before filing the application and to introduce appropriate limitations in order to cope with any exclusions which he might later face in the respective states. Extending the requirement of sufficient disclosure to limitations merely disclaiming subject-matter not eligible for patent protection would seriously impede the long-established systems of obtaining patent protection in an international framework." (point 2.4.3 of the reasons)

The Enlarged Board went on to defined the manner in which undisclosed disclaimers must be formulated. They stated that a disclaimer must not remove more than is necessary to restore novelty or to disclaim subject-matter excluded from patentability under Art. 52-57 for non-technical reasons (Headnote II.2). Furthermore, a undisclosed disclaimer must not become relevant for the assessment of inventive step or sufficiency of disclosure, because then it would infringe Art. 123(2) EPC (Headnote II.3). Finally, the amended claim containing the disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC (Headnote II.4).

 Remark: G 1/03 established a stable set of rules regarding the admissibility of undisclosed disclaimers. This stable system was called into question later, when G 2/10 (dealing with so-called "disclosed disclaimers") was published. Some Boards of Appeal have interpreted G 2/10 in such a manner as to impose additional requirements on the admissibility of undisclosed disclaimers (i.e., on top of the requirements expressed in G 1/03). In particular, some Boards found that the "remaining subject matter test" of G 2/10 should also be applied to undisclosed disclaimers. However, G 1/16 recently re-established the old order by clarifying that the requirements expressed in G 1/03 are the only ones to be applied to undisclosed disclaimers.

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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.

The full text of the decision can be found here.