Undisclosed disclaimers under threat
Posted in European Patents November 10, 2016
Disclaimers allow applicants to restrict the scope of protection being sought in a European patent application by “disclaiming” a portion of claimed subject matter. Under current EPO practice, disclaimers can be “disclosed disclaimers” or “undisclosed disclaimers”. Disclosed disclaimers are disclaimers which are “directly and unambiguously” disclosed in the application as filed. Undisclosed disclaimers are disclaimers which are not directly and unambiguously disclosed in the application as filed and, as such, are allowed only under the following circumstances: to restore novelty to a claim over the content of another European patent application filed earlier, but published later, than the filing of the European patent application in question; to restore novelty to a claim over an accidental anticipation in an unrelated field; and to remove subject matter which is excluded from patentability.
Disclosed disclaimers meet the standard set for any amendment to a European patent application, but undisclosed disclaimers do not. Undisclosed disclaimers therefore currently have a unique status under European practice. However, that status is now under threat following a referral by the Board of Appeal (T0437/14) to the Enlarged Board. In this referral, the Board of Appeal are seeking clarification of what they consider to be a potential conflict between two earlier decisions of the Enlarged Board (G1/03 and G2/10) which could lead to undisclosed disclaimers being disallowed.
The decision of the Enlarged Board will be of key importance for applicants, particularly in chemistry and life sciences (where undisclosed disclaimers are most widely used), because the loss of undisclosed disclaimers would restrict the possibilities for amendment of European patent applications, particularly in the above situations. We will therefore be monitoring this referral with keen interest.