New decision of the Enlarged Board of Appeal relating to disclaimers: G1/16

 

This recent decision of the Enlarged Board of Appeals deals with the tests that are to be applied to determine whether a disclaimer complies with the requirements of Article 123(2) EPC in view of the two previous decisions relating to disclaimers, G1/03 and G2/10.

I. Referral case

 

In the referral case, the independent claim had been amended to add two undisclosed disclaimers with the intention of re-establishing novelty in view of an accidental anticipation within the meaning of G1/03.

 

The referral questions were formulated as follows:

 

1. Is the standard referred to in G2/10 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?

 

In this context:

 

  • 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 patent application as filed.
  • the term “disclosed disclaimer” relates to the situation in which the disclaimer itself might not have been disclosed in the patent application as filed, but the subject-matter excluded by it has a basis in the patent application as filed, e.g. in an embodiment.
  • 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.

 

Conclusions of the Enlarged Board of Appeal

 

In its decision, the Enlarged Board of Appeal reasserted the principles set out in the previous decisions G1/03 and G2/10 and clarified that:

  • for undisclosed disclaimers, the proper test is whether the criteria of G1/03 are fulfilled, and
  • for disclosed disclaimers, the proper test is the gold standard disclosure test of G2/10, 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.

 

In other words, the assessment of the compliance with Article 123(2) EPC of a claim amendment by introduction of an undisclosed disclaimer is governed exclusively by the criteria laid down in G1/03. In particular, should those criteria not be met, the claim amendment by introduction of an undisclosed disclaimer cannot be allowed as it does not comply with the requirements of Article 123(2) EPC.

 

As a consequence, based on decision G1/03, an amendment by introduction of an undisclosed disclaimer may be considered allowable under Article 123(2) EPC only if the undisclosed disclaimer is introduced in order to:

 

(a) restore novelty by delimiting a claim against state of the art under Article 54(3) EPC, i.e. a European patent application filed prior to the filing date of the considered patent application, but published only after this date;

 

(b) restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC;

 

or

 

(c) disclaim subject—matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons.

 

Furthermore, the introduction of such an undisclosed 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 (see points (a) to (c) above).

 

If you have any questions concerning this newsletter, please contact Anne Francastel.

 

This IP Alert is for information purposes only and does not constitute legal advice.

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