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G1/16: EPO allows stay of proceedings pending Enlarged Board of Appeal decision on disclaimers

G1/16: EPO allows stay of proceedings pending Enlarged Board of Appeal decision on disclaimers

04/01/17

Questions relating to undisclosed disclaimers were recently referred to the Enlarged Board of Appeal at the EPO, see our previous notice here.  This referral is now also referred to as G1/16 (Disclaimer/OLED).

The President of the EPO has taken the decision that the questions that have been referred to the Enlarged Board of Appeal are significant enough to warrant staying proceedings before the Examining and Opposition Divisions until the Enlarged Board issues its decision, provided that the decisions in any cases pending before the Examining and the Opposition Divisions will depend entirely on the outcome of the referral to the Enlarged Board of Appeal.  The Notice from the EPO is set out here.

The EPO’s Notice sets out the conditions that need to be met for proceedings to be stayed, which are:

i)                    a claim is amended by the introduction of an undisclosed disclaimer, i.e. neither the disclaimer nor the subject-matter to be excluded were disclosed in the application as originally filed; and

ii)                   the undisclosed disclaimer meets the requirements of G1/03 for introducing it, but not the criteria (“gold standard”) laid down in G2/10 for assessing compliance with Article 123(2) EPC; and

iii)                 the outcome of the proceedings depends entirely on how the Enlarged Board answers the questions of law referred to it.

If proceedings are stayed, then the parties involved will be informed accordingly.  Any communications setting time limits will be withdrawn until the Enlarged Board issues its decision, at which point new communications will be issued concerning the resumption of proceedings.

If you have a case that is currently pending at the EPO, which you think might fall into one of the categories above, please let us know so that we can work with you to review your case in more detail.  It would be worthwhile bringing the fact that the case should be stayed to the attention of the Examining Division or the Opposition Division.  In the meantime, we remain of the view that it would be worthwhile exercising caution when faced with the prospect of using an undisclosed disclaimer.