G1/16 – “gold standard” approach of G2/10 disclaimed by the Enlarged Board of Appeal for undisclosed disclaimers
The Enlarged Board of Appeal has recently issued its decision G1/16 (disclaimer/OLED), which dealt with questions relating to undisclosed disclaimers.
As mentioned in our earlier post, the Enlarged Board of Appeal has previously handed down decisions relating to “undisclosed disclaimers”, which have no basis in the application as filed, in G1/03 and “disclosed disclaimers”, which do have basis in the application as filed, in G2/10.
Following an evolution of the case law, the need has arisen to clarify whether undisclosed disclaimers are still allowable. The Enlarged Board of Appeal now decided that undisclosed disclaimers are indeed allowable, endorsing the reasoning set down in the earlier Enlarged Board of Appeal decision G1/03. Specifically, the Enlarged Board of Appeal stated that an undisclosed disclaimer may be allowable to:
i) restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC;
ii) restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC; 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; and
iii) disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons.
With the added proviso that the “introduction of a disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular, it may not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure. The disclaimer may not remove more than necessary either to restore novelty or to disclaim subject-matter excluded for patentability for non-technical reasons”.
It will be welcome news for innovators that patentability can still be restored by the use of undisclosed disclaimers. There is, however, still room for interpretation of this decision by the Technical Boards of Appeal at the EPO. We therefore recommend that applicants and proprietors alike continue to exercise caution when faced with the prospect of including an undisclosed disclaimer in their patents/patent applications.
Finally, any proceedings (pre‑ or post‑grant) before the EPO that were stayed pending the outcome of this decision from the Enlarged Board of Appeal, will now continue to be examined.
If you require any further advice in relation to this decision, please contact your usual adviser at WP Thompson.