T 0768/20 - (II) G 1/93 and undisclosed disclaimers

 Key points

•  The Board: “It is not entirely clear what kind of feature the Enlarged Board had in mind [in G 1/93] when referring to a feature that "merely excludes protection for part of the subject-matter of the claimed invention as covered by the application as filed" without "providing a technical contribution to the subject-matter of the claimed invention".”
• I'm glad this Board dares to say this.
• The Board, after an extensive review of G 1/93, G2/03, G2/10 and G1/16, summarizes it as follows: “the jurisprudence of the Enlarged Board of Appeal, as understood by this board, specifies that the "gold standard" developed in opinion G 3/89 and decision G 11/91 and reaffirmed by decision G 2/10 is the general rule to be used when examining the compliance of amendments with Article 123(2) EPC. Undisclosed disclaimers constitute an exception to this rule. They are governed by the rules laid down in decision G 1/03. Point 2 of the order of decision G 1/93 (and point 16 of the reasons for the decision) also appears to concern undisclosed disclaimers, which decision G 1/03 examined in greater detail. If there are features other than undisclosed disclaimers that, "without providing a technical contribution to the subject-matter of the claimed invention, merely exclude protection for part of the subject-matter of the claimed invention as covered by the application as filed", they would constitute a second exception to the general rule. To the best knowledge of this board, the jurisprudence of the Enlarged Board of Appeal does not provide for any further exception in the context of Article 123(2) EPC.”
• "in the eyes of the board, point 2 of the order of decision G 1/93 concerns undisclosed disclaimers as per decision G 1/03. "
• The Board nevertheless also applies G 1/93, hn.2, for the event that said headnote is not limited to undisclosed disclaimers, and after some further analysis of that headnote and of the amendment at issue, finds that: "It follows that the amendment does not qualify as an amendment as per point 2 of the order of decision G 1/93. Consequently, this exception to the gold standard does not apply and the allowability of the amendment under Article 123(2) EPC has to be examined using the gold standard."

T 0768/20 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t200768eu1.html

2.2 Exception to the "gold standard"?

The appellant's second line of reasoning involved

presenting the amendment in hand as being one to which the "gold standard" did not apply. Before this argument can be examined as to its merits, it is necessary to consider the development of the jurisprudence of the Enlarged Board of Appeal in respect of the allowability of amendments.

2.2.1 Development of the jurisprudence of the Enlarged Board of Appeal in respect of the allowability of amendments

Opinion G 3/89 and decision G 11/91 dealt with the allowability of corrections under Rule 88 EPC 1973 (identical except for a slight drafting change to Rule 139 EPC) and found that the parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) may be corrected under this rule only within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed. Any such correction was deemed to be of a strictly declaratory nature and thus did not infringe the prohibition of extension under Article 123(2) EPC.

In decision G 1/93, the Enlarged Board considered the question of the "inescapable trap", i.e. a situation where a feature without a proper basis in the original application had been added to a claim during the grant proceedings. The trap means that it is impossible to maintain the feature (because it violates Article 123(2) EPC) but in some cases the feature cannot be deleted either (because this would lead to a violation of Article 123(3) EPC). In point 16 of the reasons for the decision, the Enlarged Board considered different kinds of features:

"Whether or not the adding of an undisclosed feature limiting the scope of protection conferred by the patent as granted would be contrary to the purpose of Article 123(2) EPC to prevent an applicant from getting an unwarranted advantage by obtaining patent protection for something he had not properly disclosed and maybe not even invented on the date of filing of the application, depends on the circumstances. If such added feature, although limiting the scope of protection conferred by the patent, has to be considered as providing a technical contribution to the subject-matter of the claimed invention, it would, in the view of the Enlarged Board, give an unwarranted advantage to the patentee contrary to the above purpose of Article 123(2) EPC. Consequently, such feature would constitute added subject-matter within the meaning of that provision. A typical example of this seems to be the case, where the limiting feature is creating an inventive selection not disclosed in the application as filed or otherwise derivable therefrom. If, on the other hand, the feature in question merely excludes protection for part of the subject-matter of the claimed invention as covered by the application as filed, the adding of such feature cannot reasonably be considered to give any unwarranted advantage to the applicant. Nor does it adversely affect the interests of third parties ... In the view of the Enlarged Board, such feature is, on a proper interpretation of Article 123(2) EPC, therefore not to be considered as subject-matter extending beyond the content of the application as filed within the meaning of that provision. It follows that a patent containing such a feature in the claims can be maintained without violating Article 123(2) EPC or giving rise to a ground for opposition under Article 100(c) EPC. The feature being maintained in the claims, there can be no violation of Article 123(3) EPC either." (Underlining added by this board.)

It is not entirely clear what kind of feature the Enlarged Board had in mind when referring to a feature that "merely excludes protection for part of the subject-matter of the claimed invention as covered by the application as filed" without "providing a technical contribution to the subject-matter of the claimed invention". The question referred to the Enlarged Board did not mention features of that kind, and the feature under consideration in the case on which the referring decision (T 384/91) is based ("substantially free of striae") does not appear to be this kind of feature. Nonetheless, point 7 of the reasons for decision G 1/93 states that the patent proprietor had "referred to the standing practice of allowing disclaimers in order to limit the protection conferred in view of prior art made known to applicants during examination, and submitted that it would be in line with this practice to allow a clearly limiting feature of the kind under consideration in the present case to remain in a claim without invalidating the patent". The Enlarged Board's findings in point 16 of the reasons for the decision and in point 2 of the order thus seem to concern those disclaimers.

The question of disclaimers was later taken up in decision G 1/03 (and G 2/03) of the Enlarged Board of Appeal. In point 2 of the reasons for the decision, the Enlarged Board defined a disclaimer as a "'negative' technical feature, typically excluding from a general feature specific embodiments or areas". It limited its scrutiny to "disclaimers which have not been disclosed in the application as filed", which it called "undisclosed disclaimers". The Enlarged Board decided that these disclaimers were allowable under certain conditions. Its reasoning was mainly based on the purpose of Article 54(3) EPC (see point 2.1.1 of the reasons for the decision). A disclaimer that only excluded subject-matter "for legal reasons" was found to have "no bearing on the technical information in the application" and, therefore, not to be inconsistent with Article 123(2) EPC (see point 2.1.3 of the reasons for the decision). By extension a disclaimer excluding the subject-matter of an accidental anticipation was "assumed not to change the technical information in the application as filed" and, for this reason, also to comply with the requirements of Article 123(2) EPC (see point 2.2.2 of the reasons for the decision). The Enlarged Board also allowed disclaimers for subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons (see point 2.4 of the reasons).

In this board's view, decision G 1/03 is best understood as specifying a limited set of exceptions, namely that, for the sake of consistency of the European patent system and similar teleological reasons, the requirements of Article 123(2) EPC are deemed to be fulfilled even though the amendment does not meet the gold standard. Interestingly, decision G 1/03 repeatedly refers to decision G 1/93, mainly to rebut arguments based on its interplay with decision G 2/98 (see point 2.1.2 of the reasons), but does not build its core argument on point 2 of the order or point 16 of the reasons for decision G 1/93.

Decision G 1/03 did not put an end to the discussion on the allowability of disclaimers, in particular because it was limited to the above-mentioned "undisclosed disclaimers". The question of "disclosed disclaimers" disclaiming subject-matter that was disclosed in the original application led to another referral to the Enlarged Board of Appeal. In its decision G 2/10, the Enlarged Board noted that decision G 1/03 was not applicable to this kind of disclaimer (see point 3 of the reasons for the decision) and concluded that their allowability was to be examined using the criteria set out in opinion G 3/89 and decision G 11/91, i.e. that an amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed infringes Article 123(2) EPC if the subject-matter remaining in the claim after the introduction of the disclaimer is not, explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed (see Order 1a).

In point 4.3 of the reasons for the decision, the Enlarged Board also considered the findings of decision G 1/93. It explained that in introducing the "technical contribution" criterion the Enlarged Board had not been intending to amend the definition concerning when an amendment is allowable under Article 123(2) EPC generally, but that it had merely been seeking a way of avoiding the potentially fatal consequences of the patentee being caught in the "inescapable trap" between the requirements of paragraphs (2) and (3) of Article 123 EPC. The Enlarged Board went on to say:

"It can thus be stated that neither decision G 1/93 nor decision G 1/03 intended to modify the general definition of the requirements of Article 123(2) EPC established in opinion G 3/89 and decision G 11/91, which definition has become the generally accepted, one could also say the "gold" standard, for assessing any amendment for its compliance with Article 123(2) EPC."

The board in this case sees this as a confirmation of its understanding that the findings of decisions G 1/03 and G 1/93 concern exceptions to the general rule governing the allowability of amendments referred to as the "gold standard".

The bold reaffirmation of this standard in decision G 2/10, in particular the assertion that it applied to "any amendment", raised doubts as to whether undisclosed disclaimers only had to comply with the criteria defined in decision G 1/03 or whether they also had to comply with the gold standard. This question led to another referral to the Enlarged Board of Appeal. In decision G 1/16, the Enlarged Board explained that "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" (see point 14 of the reasons). The Enlarged Board maintained the distinction and confirmed that undisclosed disclaimers were governed by the criteria of decision G 1/03 alone.

In summary, the jurisprudence of the Enlarged Board of Appeal, as understood by this board, specifies that the "gold standard" developed in opinion G 3/89 and decision G 11/91 and reaffirmed by decision G 2/10 is the general rule to be used when examining the compliance of amendments with Article 123(2) EPC. Undisclosed disclaimers constitute an exception to this rule. They are governed by the rules laid down in decision G 1/03. Point 2 of the order of decision G 1/93 (and point 16 of the reasons for the decision) also appears to concern undisclosed disclaimers, which decision G 1/03 examined in greater detail. If there are features other than undisclosed disclaimers that, "without providing a technical contribution to the subject-matter of the claimed invention, merely exclude protection for part of the subject-matter of the claimed invention as covered by the application as filed", they would constitute a second exception to the general rule. To the best knowledge of this board, the jurisprudence of the Enlarged Board of Appeal does not provide for any further exception in the context of Article 123(2) EPC.

2.2.2 Application to the case in hand

(a) Core of the matter

In point 6.2.1 of its communication pursuant to

Article 15(1) RPBA 2020, this board examined the alleged "disclaimer effect" of the feature "intact". The board found the amendment not to comply with the criteria set out by decision G 1/03. In response to this provisional assessment, the appellant argued that, despite its "disclaiming effect", the amendment was not an undisclosed disclaimer as per decision G 1/03. According to the appellant, positively claiming a feature and thus implying a "disclaimer effect" (removing subject-matter from the periphery of a claim) was clearly not the same as a disclaimer that involves stating a negative technical feature to exclude subject-matter from a generality (excluding subject-matter from inside the claim).

As has been pointed out above (see point 2.2.1), in the eyes of the board, point 2 of the order of decision G 1/93 concerns undisclosed disclaimers as per decision G 1/03. Nevertheless, for the appellant's sake, the board will assume that in decision G 1/93 the Enlarged Board envisaged something more general than - or completely different from - undisclosed disclaimers as per decision G 1/03 and will examine whether the amendment under consideration "merely excludes protection for part of the subject-matter of the claimed invention as covered by the application as filed" without "providing a technical contribution to the subject-matter of the claimed invention".

(b) Brief explanation of decision G 1/93

Point 2 of the order of decision G 1/93, which expresses the Enlarged Board's relevant finding in the most precise way, requires that the feature

"... without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed".

This statement requires some clarification.

First, this board understands the expression "subject-matter of the claimed invention" to mean the subject-matter of the claim (or claims). The addition of "as covered by the application as filed" merely expresses the fact that this subject-matter has to be part of the content of the application as filed.

Second, the technical contribution under consideration is a "contribution to the subject-matter of the claimed invention". Consequently, it is the subject-matter of the claim that has to be considered (and not the subject-matter of the original application as a whole). Otherwise the Enlarged Board would have referred to the "invention" rather than to the "claimed invention".

Third, "excludes protection" has to be understood as a

reduction of the scope of protection (i.e. the domain covered by the claim(s) as granted).

Fourth, "excluding protection for part of the subject-matter of the claimed invention" is interpreted as a partial reduction of the scope of protection conferred by the subject-matter of the claim.

Consequently, the requirement set out by the Enlarged Board may be reformulated as follows:

A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claim, merely partially reduces the scope of protection of the claim, is not to be considered to be subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC.

(c) Effect of inserting the adjective "intact"

Inserting the adjective "intact" undoubtedly, and uncontestedly, partially reduces the scope of protection of the claim. The feature was inserted in order to overcome an objection of lack of novelty over a document of the state of the art under Article 54(2) EPC. The amended claim only covers processes in which the metallic ink is applied directly to an intact surface of the cured energy curable layer, whereas the unamended claim also covers processes in which it is applied to a damaged or altered layer.

The crucial question to be answered by the board is whether the adjective "intact" provides a technical

contribution to the subject-matter of the claim.

The appellant argued that it did not. Its core argument was that adding the adjective did not alter the surface of the cured layer because the surface is in its original state, and that adding the adjective "intact" was equivalent to explicitly stating what is implicit, without there being any substantial modification.

This argument has not persuaded the board because it confuses the subject-matter of the claim and the subject-matter of the application as a whole.

The appellant repeatedly referred to the contents of the original application, such as Fig. 1 and 2B and the related description, i.e. the subject-matter of the application as a whole. However, it is the subject-matter of claim 1 that needs to be considered. Before the amendment, the cured layer of the claim did not have to be intact. Regardless of whether the feature "intact surface" has an implicit basis in the original application (for a discussion of this aspect, see point 2.1 above), there is certainly no such basis in the unamended claim. Otherwise, it would not have been necessary to amend the claim to overcome the novelty objection. The fact that the cured layer is intact undoubtedly has a technical consequence because damage to the surface would result in a reduced reflectivity of the printed product (see also paragraph [0037] of the published application emphasising the importance of high reflectivity). Consequently, inserting the feature "intact" provides a technical contribution to the subject-matter of claim 1.

(d) Conclusion

It follows that the amendment does not qualify as an amendment as per point 2 of the order of decision G 1/93. Consequently, this exception to the gold standard does not apply and the allowability of the amendment under Article 123(2) EPC has to be examined using the gold standard.

As there is no explicit disclosure of the feature in the original application (which is uncontested) and the board is unable to confirm its implicit disclosure (see point 2.1 above), the amendment is not allowable pursuant to the gold standard and must be held to extend the subject-matter of claim 1 beyond the content of the application as filed.

2.3 Conclusion

The ground for opposition under Article 100(c) EPC prejudices the maintenance of the patent as granted.

3. Referral to the Enlarged Board of Appeal

Under Article 112(1)(a) EPC, in order to ensure uniform application of the law, or if a point of law of fundamental importance arises during proceedings on a case, a board must, either of its own motion or following a request from a party to the appeal, refer any question to the Enlarged Board of Appeal if it considers that a decision of the Enlarged Board is required. If the board of appeal rejects the request, it must give the reasons in its final decision.

The appellant requested that the board refer six questions to the Enlarged Board of Appeal under Article 112(1)(a) EPC.

3.1 Question 1

"Does the Gold Standard for assessing the allowability

of the subject-matter of amendments under Article 123(2) EPC apply to all amendments irrespective of the context of the amendment made, or is the Gold Standard limited to amendments of the type that provide a technical contribution to the claimed invention?"

The board agrees that this question concerns a point of law of fundamental importance. However, the board can answer this question on the basis of the existing jurisprudence of the Enlarged Board of Appeal, so no further decision of the Enlarged Board is required to ensure uniform application of the law.

The appellant took issue with the Enlarged Board's statement in point 4.3 of the reasons for decision G 2/10, according to which "the general definition of the requirements of Article 123(2) EPC established in opinion G 3/89 and decision G 11/91 ... has become the generally accepted, one could also say the "gold" standard, for assessing any amendment for its compliance with Article 123(2) EPC" (underlining added by this board).

The board accepts that this statement disregards exceptions to the gold standard established by the Enlarged Board itself in its decisions G 1/93 and G 1/03 (see point 2.2 above). However, the situation has been clarified by decision G 1/16, which confirmed that the gold standard is not to be applied to undisclosed disclaimers, so the uniform application of the law is ensured even without a further referral to the Enlarged Board of Appeal.

3.2 Question 2

"If the answer to question 1 is that the Gold Standard does apply to all amendments, are there nevertheless different conditions under the Gold Standard for assessing whether amendments that do or do not provide a technical contribution to the claimed invention comply with Article 123(2) EPC ?, i.e. given that amendments that potentially involve subject-matter that would extend beyond the content of the application as filed and as such are associated with an unwarranted advantage, so that for such amendments to establish compliance with Article 123)2 EPC [sic] it needs to be established beyond any reasonable doubt that the potentially added subject-matter does not extend beyond the content of the application as filed, whereas amendments that do not involve subject-matter that would extend beyond the content of the application as filed are not associated with an unwarranted advantage and per se comply with Article 123(2) EPC?"

As the jurisprudence of the Enlarged Board of Appeal has established that the gold standard does not apply to all amendments, there is no need to answer this conditional question.

3.3 Question 3

"If the answer to question 1 is that the Gold Standard

is limited to amendments of the type that provide a technical contribution to the claimed invention, what criteria apply for demonstrating that amendments that do not provide a technical contribution to the claimed invention comply with Article 123(2) EPC?"

The answer to this question is not needed in order to rule on the matter in hand because the amendment under consideration does provide a technical contribution to the claimed invention (see point 2.2.2(c) above).

3.4 Question 4

"If a claimed feature is qualified by a positive statement "A" that limits the claimed feature to a state "A" and excludes from the claim a state "non-A", where "A" and "non-A" are mutually exclusive opposite conditions, and where state "A" is a normal state that is not explicitly disclosed in but can be implied from the original disclosure whereas the disclaimed state "non-A" is an abnormal state that is neither explicitly nor implicitly disclosed in the original disclosure, is the limitation of the claim to state "A" considered to not add subject matter to the original disclosure in the sense of Article 123(2) EPC by simple deduction that the normal state "A" is implied from the original disclosure in the absence of evidence that would produce the abnormal state "non-A."

This question need not be answered in order to rule on the specific case under consideration because the disclosure of the application as filed does not imply the intactness of the cured layer; the original application is not concerned with this question (see point 2.1 above).

3.5 Question 5

"If, to comply with Article 123(2)EPC, it must be proven that the normal state "A" is directly and unambiguously derivable from the original disclosure, by a skilled person using is common general knowledge, what are the criteria for establishing such proof? Is it proof on the balance of probabilities, proof beyond reasonable doubt, or proof beyond any doubt?"

As already mentioned (see point 2.1.2 above), there is a consensus among the boards of appeal that the standard of proof "beyond reasonable doubt" is appropriate in these situations (see Case Law, section II.E.5). Moreover, as the appellant has not persuaded the board that the original application can be deemed to implicitly disclose, directly and unambiguously, that the metallic ink is applied directly to the intact surface of the cured energy curable layer, the precise standard to be applied is not crucial for the specific case under consideration. Therefore, there is no good reason to refer this question to the Enlarged Board.

3.6 Question 6

"If the Enlarged Board determines that the applicable

standard of proof to be applied in dealing with the situation of Question 4 is "proof beyond reasonable doubt", what criteria determine "beyond reasonable doubt" in this context, given that what is expected is: absent any proof of damage in normal operation, which does not correspond to the Case Law?"

As is clear from the reference to the absence of proof of damage (of the cured layer) during normal operation (of the claimed process), this question is too specific to be decided by the Enlarged Board. It is unrelated to the uniform application of the law and cannot constitute a point of law of fundamental importance. Moreover, as the situation in hand does not correlate with that set out in question 4, an answer to question 6 is not needed to rule on this case.

3.7 Conclusion

As none of the questions proposed by the appellant meets the requirements for questions to be referred to the Enlarged Board of Appeal in accordance with Article 112(1)(a) EPC, the request for referral has to be refused.

Order

For these reasons it is decided that:

1. The appeal is dismissed.