The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) recently issued the much anticipated decision G 1/16 on undisclosed disclaimers. The decision sets out that G 2/10, which dealt with disclosed disclaimers, is not the relevant test when assessing undisclosed disclaimers. Undisclosed disclaimers shall instead follow the earlier decision, G 1/03.
Typically, claims recite technical features/elements which define the invention, i.e. “positive” features. Disclaimers, however, typically exclude specific embodiments from more generally defined subject-matter and are therefore phrased as “negative” features. Although not explicitly allowed for in the European Patent Convention (EPC), disclaimers have been extensively utilised before the EPO, especially in the chemical and life sciences field.
The primary issue facing disclaimers (both undisclosed and disclosed) is whether their introduction into a claim introduces subject-matter not disclosed in the application as filed, i.e. their introduction infringes Article 123(2) EPC.
G 1/03 dealt with the allowability of an amendment to a claim by the introduction of an undisclosed disclaimer. Undisclosed disclaimers, as the name suggests, are not disclosed and therefore find no basis in the application as filed. Such disclaimers may only be allowed to restore novelty over prior art cited under Article 54(3) EPC, to restore novelty over an accidental anticipation or to remove subject-matter excluded from patentability for non-technical reasons.
G 2/10 concerned disclosed disclaimers which, unsurprisingly, find basis in the application as filed. A disclosed disclaimer is allowed only if the subject-matter remaining in the claim after the introduction of the disclaimer is directly and unambiguously disclosed in the application as filed. This decision confirmed that the “gold standard” test for assessing added matter must be met but it was unclear whether this “gold standard” should also be used to assess undisclosed disclaimers.
The EBA confirmed that undisclosed disclaimers should be assessed in line with G 1/03 and that the “gold standard” is not relevant for assessing whether an undisclosed disclaimer complies with the requirements of Article 123(2) EPC.
However, the EBA did clarify that the specific criteria of G 1/03 should be correctly applied. In particular, the disclaimer may only be allowed in the situations mentioned above, i.e. to restore novelty over prior art cited under Article 54(3) EPC; restore novelty from accidental anticipation; and remove subject-matter excluded from patentability for non-technical reasons. The Enlarged Board also reiterated that the introduction of a disclaimer “may not provide a technical contribution to the subject-matter disclosed in the application as filed” and stressed that the disclaimer “may not be or become relevant to inventive step or for the question of sufficiency of disclosure”.
If you have any questions on this decision, please contact your usual Venner Shipley representative.