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The Enlarged Board of Appeal recently issued decision G 1/16, which provides welcome clarity regarding the allowability of undisclosed disclaimers.
The caselaw of the Boards of Appeal has distinguished between “undisclosed disclaimers” and “disclosed disclaimers”. Undisclosed disclaimers are those in which a claim is amended to disclaim an embodiment which is not disclosed in the application as originally filed, but which is disclosed in the prior art. Disclosed disclaimers are those in which a claim is amended to disclaim an embodiment which is disclosed in the application as filed.
Decision G 1/16 arose due to the suggestion from some Boards of Appeal that undisclosed disclaimers should no longer be allowed. The Enlarged Board, however, endorsed the reasoning in its previous decision G 1/03, and held that undisclosed disclaimers are in fact permissible under certain limited circumstances. In particular, they are permitted when used to establish novelty, or to remove subject matter excluded from patentability, under circumstances where (a) the disclaimer is precisely coterminous with the relevant prior art disclosure (where appropriate) and (b) the disclaimer is in no way relevant for inventive step or sufficiency.
The continued availability of undisclosed disclaimers will be welcome news for applicants/patentees. However, great care should be taken before amending a claim of a European patent application by means of an undisclosed disclaimer – the criteria governing the allowability of such disclaimers are strict, and if the disclaimer is later found not to comply with the criteria set out in G 1/16, it may not be possible to correct the language after grant without contravening the prohibition in the EPC on post-grant claim broadening.
The EPO will now resume examination of any patent applications or oppositions that were stayed pending the outcome of G 1/16.
If you have any questions concerning the implications of this decision, please get in touch with your usual J A Kemp contact.