Referral to the Enlarged Board of Appeal regarding Undisclosed Disclaimers

The EPO has referred three further questions on disclaimers to the Enlarged Board of Appeal. The Enlarged Board of Appeal has already considered disclaimers on two previous occasions, with decisions G1/03 and G2/03 setting out the principles by which disclaimers must be assessed. The three new questions arise from decision T437/14 and relate specifically to undisclosed disclaimers (i.e., disclaimers removing subject matter not disclosed in the original application).

The Enlarged Board of Appeal (in answer 2.1 of G1/03) has previously stated that an undisclosed disclaimer is allowable under Article 123(2) EPC when the disclaimer is used:

a. to restore novelty over disclosure in an earlier unpublished European application citable for novelty only in accordance with Article 54(3) EPC;

b. to restore novelty over an accidental anticipation contained in a prior art document; an anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention;

c. to disclaim subject-matter that is excluded from patentability for non-technical reasons (e.g., a method of medical treatment).

The following conditions must also be met:

i. The disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.

ii. A disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to Article 123(2) EPC.

iii. A claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC.

The subsequent decision of the Enlarged Board of Appeal, G2/10, emphasised that disclosed disclaimers (i.e., disclaimers removing subject matter originally disclosed in an embodiment of the invention) are only allowable when the skilled person would, using common general knowledge, regard the remaining claimed subject-matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed" (second paragraph of point 4.5.4 of the reasons in G2/10; emphasis added). T437/14 refers to this test as the gold standard.

Upon reviewing G2/10 the Board in T437/14 believes that this so-called gold standard is the standard that should be used to assess all amendments for compliance with Article 123(2) EPC, in both of the above-mentioned decisions of the Enlarged Board of Appeal. The Board in T437/14 is therefore seeking further clarification about the assessment of undisclosed disclaimers, and has referred the following questions to the Enlarged Board of Appeal:

1. Is the standard referred to in G 2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC, i.e. whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed, also to be applied to claims containing undisclosed disclaimers?
2. If the answer to the first question is yes, is G 1/03 set aside as regards the exceptions relating to undisclosed disclaimers defined in its answer 2.1?
3. If the answer to the second question is no, i.e. if the exceptions relating to undisclosed disclaimers defined in answer 2.1 of G 1/03 apply in addition to the standard referred to in G 2/10, may this standard be modified in view of these exceptions?

The Board in T437/14 goes on to comment that, should the gold standard test apply to undisclosed disclaimers then, in the Board 's opinion, most undisclosed disclaimers would be unallowable under Article 123(2) EPC.

We will report again when there is any further information on this case. A decision is expected in around 18 months.