Disclaiming a Specific Embodiment

This article was included in our Winter 2010 edition of Inside IP magazine.

Disclaimers, which are statements that specifically exclude certain subject matter from the scope of a claim, are something of a thorny issue in Europe.  The European Patent Office (EPO) does not have a problem with disclaimers in principle, but their strict stance on introducing subject matter which goes beyond the scope of what was disclosed in the application as filed means that applicants are in dangerous territory if the application did not include explicit basis for the disclaimer.

In 2004, the Enlarged Board of Appeal (EBA) of the EPO set out, in decisions G1/03 and G2/03, the criteria to be met

by a disclaimer when there is no explicit support for it in the application as filed.  Only in limited and very specific circumstances  can a disclaimer be added to the claims without falling foul of the added subject matter provisions.

However, it turns out that this decision failed to cover all eventualities and a new referral to the EBA, under case number G2/10, asks the question:

“Does a disclaimer infringe Article 123(2) EPC if its subject-matter was disclosed as an embodiment of the invention in the application as filed?”

In other words, the question is: if the application includes disclosure of a specific embodiment of the invention, does that provide the Applicant with adequate basis to disclaim that embodiment, thereby excluding it from the scope of the claims?  This is a curious situation, as the application will presumably describe the embodiment in question as being of benefit, possibly even as preferred, but the claims will then exclude it from their scope.

We await the outcome with interest and will, of course, report the decision once it is announced.

Siân Gill 29 Nov 2010

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