Enlarged Board of Appeal referral – undisclosed disclaimers
The use of disclaimers in European practice is well‑established. There are two types of disclaimers that have been considered by the Enlarged Board of Appeal on two separate occasions in the past: “undisclosed disclaimers”, which have no basis in the application as filed, were considered in G1/03 and “disclosed disclaimers”, which do have basis in the application as filed, were considered in G2/10.
The use of undisclosed disclaimers is a diversion from the long held principle at the EPO that a patent or patent application should not be amended in such a way that it contains subject‑matter that is not directly and unambiguously derivable from the application as filed (Article 123(2) EPC). In G1/03, the Enlarged Board of Appeal provided three exceptions when it would be acceptable to include an undisclosed disclaimer, namely:
i) to restore novelty over an earlier unpublished European application citable for novelty only purposes under Article 54(3) EPC;
ii) to restore novelty over an accidental anticipation. An anticipation is deemed to be 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) to disclaim subject-matter which is excluded from patentability for non-technical reasons.
Disclosed disclaimers, on the other hand, are directly and unambiguously derivable from the application as filed. In G2/10, the Enlarged Board of Appeal considered whether it was indeed permissible for a positive recitation of an embodiment of the invention to be turned into a disclaimer. The conclusion of the Board was that this is allowable, provided the following test is met: “…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” (point 4.5.4 of the reasons). This test was said to be “the generally accepted ‘gold standard’ for assessing any amendment for its compliance with Article 123(2) EPC”.
The so‑called “gold standard” has been applied in various forms by the Boards of Appeal following G2/10. In instances when the “gold standard” has been applied strictly, disclaimers have not been allowed (see T748/09). However, there have been instances where the “gold standard” has been modified and disclaimers have been held to be allowable (see T1870/08 and T2018/09).
The Board in T437/14 would like to ascertain whether the “gold standard” should also be applied to undisclosed disclaimers that are currently allowable following G1/03. The Board of Appeal in T437/14 has, therefore, referred the following questions to the Enlarged Board of Appeal.
- Is the standard referred to in G2/10 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?
- If the answer to the first question is yes, is G1/03 set aside as regards the exceptions relating to undisclosed disclaimers defined in its answer 2.1?
- If the answer to the second question is no, i.e. if the exceptions relating to undisclosed disclaimers defined in answer 2.1 of G1/03 apply in addition to the standard referred to in G2/10, may this standard be modified in view of these exceptions?
The decision from the Enlarged Board of Appeal will not be issued for some time, and it may be several years before we have some certainty in relation to the allowability of undisclosed disclaimers. It would, therefore, be worthwhile exercising some caution in the meantime when faced with the prospect of including an undisclosed disclaimer.