Undisclosed disclaimers under threat

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.

Andrew McGettrick

This entry was posted in European Patents.

WIPO Translate

The World Intellectual Property Organization has developed a new patent document translation tool based on neural machine translation technology and has recently released a beta version for testing purposes. While the technology has already been trained to translate Chinese, Japanese and Korean patent documents into English, the beta version is currently only available for Chinese-English translation purposes.

Automated patent document translation tools already exist. For example, the Patent Translate feature of Espacenet (the patent document database of the European Patent Office) was developed in collaboration with Google Translate and is capable of machine translating documents between English, French, German and 29 other languages. Patent Translate is a popular tool and enables clients and attorneys alike to gain a rough understanding of a foreign-language patent document in a short space of time. However, machine translation tools are not 100% reliable and often have particular difficulties with translating East Asian languages such as Chinese or Japanese. For that reason it is always advisable to have a patent document professionally translated where costs permit, especially if the translation is to be relied upon in a legal context.

Nevertheless, WIPO believes that its new Translate tool is capable of reproducing a more natural document style and syntax than existing machine translation technologies. WIPO has focused on the translation of Chinese, Japanese and Korean patent documents into English because these languages account for the majority of international patent filings (for example, 55% of worldwide patent filings in 2014) and because traditional translation tools have particular difficulties with such so-called ‘distant language pairs’.

WIPO plans to extend the neural machine translation service to cover other languages in the near future. While it is unlikely that machine translation tools will completely replace the need for professional human translators anytime soon, users of the international patent system will undoubtedly benefit from the existence this new tool.

Michael Ford