- The Enlarged Board decides that for 'undisclosed' disclaimers the proper test is whether the criteria of G 1/03 are fulfilled, and that for 'disclosed' disclaimers the proper test is the gold standard disclosure test of G 2/10. Hence, the assessment of the allowability of a claim amendment by an undisclosed disclaimer is governed exclusively by the criteria laid down in G 1/03.
BoA order (headnote)
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 [i.e. be made to provide novelty over an Article 54(3) prior right, or over an accidental anticipation, or to exclude subject-matter excluded from patentability for non-technical reasons].
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.
From the BoA news item:
"In the reasons for its decision, the Enlarged Board emphasised that this standard is neither intended nor to be interpreted as a departure from decision G 1/03 but that it is understood to be already encompassed by the requirements of G 1/03.""The standard defined in G 2/10 as the "gold standard" remains the relevant disclosure test for assessing the allowability of a claim amendment by the introduction of a disclosed disclaimer."
Further comment
- The Enlarged Board adds (in [46]) that the evaluation of inventive step has to be carried out disregarding the undisclosed disclaimer (cf. T 710/92).
EPO G1/16 (G 0001/16) - news item, link
Reasons for the decision
[...]
Disclaimer - definition
12. Patent claims define the subject-matter for which protection is sought in terms of the technical features of the claimed invention (Articles 69(1), first sentence, and 84 EPC). These technical features define the elements and characteristics of the claimed subject-matter and, usually, are phrased as “positive” technical features. However, the claimed subject-matter may also be defined in terms of “negative” claim features which describe elements and characteristics that the claimed subject-matter does not have.
13. Generally speaking, a disclaimer in a patent claim consists of words, terms, formulae, compounds or other elements which identify subject-matter specifically not claimed.
The term “disclaimer”, as used in G 1/03 (supra, Reasons, point 2), means an amendment to a claim resulting in the incorporation therein of a "negative" technical feature, typically excluding from a generally defined subject-matter specific embodiments or areas. However, the Enlarged Board limited the definition in that decision to the extent that a disclaimer which contributes to the technical teaching and adds subject-matter within the meaning of Article 123(2) EPC is not a disclaimer within the meaning of decision G 1/03 (supra, Reasons, point 2.6.1).
This definition of the term “disclaimer” was also used in G 2/10 (supra, Reasons, point 2.2).
The Enlarged Board concurs furthermore with decision T 1870/08 (Reasons, point 4.6.7, not published in the OJ EPO) that a disclaimer is only a proper disclaimer if the remaining legal subject-matter is less than that of the unamended claim. If any subject-matter can be identified which falls within the scope of the claim after amendment by the proposed disclaimer, but which did not do so before the amendment, the disclaimer is improper and, as a consequence of this, unallowable under Article 123(2) EPC.
This understanding of what constitutes a proper disclaimer is also reflected in the present decision.
14. 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.
15. The term “disclosed disclaimer” relates to the situation in which the disclaimer itself might not have been disclosed in the application as filed, but the subject-matter excluded by it has a basis in the application as filed, e.g. in an embodiment.
16. Thus, undisclosed disclaimers and disclosed disclaimers can be distinguished according to whether the subject-matter on which the respective disclaimer is based is explicitly or implicitly, directly and unambiguously, disclosed to the skilled person using common general knowledge, in the application as filed.
[...] 43. It follows from the above that the choice of the proper test for assessing the allowability of any disclaimer is determined by the fundamental distinction, in terms of their legal nature, between disclosed disclaimers and undisclosed disclaimers. That distinction necessitates providing for each of the two classes of disclaimer a single specific test for assessing whether the introduction of a given disclaimer is in compliance with Article 123(2) EPC.
For undisclosed disclaimers the proper test is whether the criteria of G 1/03 are fulfilled, and for disclosed disclaimers the proper test is the gold standard disclosure test of G 2/10.
44. Thus, the assessment of the allowability of a claim amendment by an undisclosed disclaimer is governed exclusively by the criteria laid down in G 1/03. In other words, once an amendment by an undisclosed disclaimer has met the requirements of G 1/03, the introduction of such an undisclosed disclaimer for legal reasons may be considered allowable under Article 123(2) EPC, without prejudice to the other requirements of the EPC. No modifications are to be made to, nor any conditions added which go beyond, the criteria of G 1/03.
However, should those criteria not be met, the claim amendment by the introduction of an undisclosed disclaimer cannot be allowed as it does not comply with the requirements of Article 123(2) EPC.
Reasons for the decision
[...]
Disclaimer - definition
12. Patent claims define the subject-matter for which protection is sought in terms of the technical features of the claimed invention (Articles 69(1), first sentence, and 84 EPC). These technical features define the elements and characteristics of the claimed subject-matter and, usually, are phrased as “positive” technical features. However, the claimed subject-matter may also be defined in terms of “negative” claim features which describe elements and characteristics that the claimed subject-matter does not have.
13. Generally speaking, a disclaimer in a patent claim consists of words, terms, formulae, compounds or other elements which identify subject-matter specifically not claimed.
The term “disclaimer”, as used in G 1/03 (supra, Reasons, point 2), means an amendment to a claim resulting in the incorporation therein of a "negative" technical feature, typically excluding from a generally defined subject-matter specific embodiments or areas. However, the Enlarged Board limited the definition in that decision to the extent that a disclaimer which contributes to the technical teaching and adds subject-matter within the meaning of Article 123(2) EPC is not a disclaimer within the meaning of decision G 1/03 (supra, Reasons, point 2.6.1).
This definition of the term “disclaimer” was also used in G 2/10 (supra, Reasons, point 2.2).
The Enlarged Board concurs furthermore with decision T 1870/08 (Reasons, point 4.6.7, not published in the OJ EPO) that a disclaimer is only a proper disclaimer if the remaining legal subject-matter is less than that of the unamended claim. If any subject-matter can be identified which falls within the scope of the claim after amendment by the proposed disclaimer, but which did not do so before the amendment, the disclaimer is improper and, as a consequence of this, unallowable under Article 123(2) EPC.
This understanding of what constitutes a proper disclaimer is also reflected in the present decision.
14. 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.
15. The term “disclosed disclaimer” relates to the situation in which the disclaimer itself might not have been disclosed in the application as filed, but the subject-matter excluded by it has a basis in the application as filed, e.g. in an embodiment.
16. Thus, undisclosed disclaimers and disclosed disclaimers can be distinguished according to whether the subject-matter on which the respective disclaimer is based is explicitly or implicitly, directly and unambiguously, disclosed to the skilled person using common general knowledge, in the application as filed.
[...] 43. It follows from the above that the choice of the proper test for assessing the allowability of any disclaimer is determined by the fundamental distinction, in terms of their legal nature, between disclosed disclaimers and undisclosed disclaimers. That distinction necessitates providing for each of the two classes of disclaimer a single specific test for assessing whether the introduction of a given disclaimer is in compliance with Article 123(2) EPC.
For undisclosed disclaimers the proper test is whether the criteria of G 1/03 are fulfilled, and for disclosed disclaimers the proper test is the gold standard disclosure test of G 2/10.
44. Thus, the assessment of the allowability of a claim amendment by an undisclosed disclaimer is governed exclusively by the criteria laid down in G 1/03. In other words, once an amendment by an undisclosed disclaimer has met the requirements of G 1/03, the introduction of such an undisclosed disclaimer for legal reasons may be considered allowable under Article 123(2) EPC, without prejudice to the other requirements of the EPC. No modifications are to be made to, nor any conditions added which go beyond, the criteria of G 1/03.
However, should those criteria not be met, the claim amendment by the introduction of an undisclosed disclaimer cannot be allowed as it does not comply with the requirements of Article 123(2) EPC.
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