Enlarged Board of Appeal – G 2/10

Allowability of Unsupported Disclaimers

G 2/10 of the Enlarged Board of Appeal of the European Patent Office, which was issued at the end of August 2011, further refines the case law concerning the allowability, in relation to Article 123(2) EPC, of unsupported disclaimers in the claims of a European patent application.

Until G 2/10, the relevant criteria in Europe were set out in G 1/03, the headnote for which is:

1. An amendment to a claim by the introduction of a disclaimer may not be refused under Article 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed.

2. The following criteria are to be applied for assessing the allowability of a disclaimer which is not disclosed in the application as filed:

2.1 A disclaimer may be allowable in order to:

– restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC;

– 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

– disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons.

2.2 A disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.

2.3 A disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to Article 123(2) EPC.

2.4 A claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC.

Arguably the most important of these criteria in practice are 2.1 and 2.2, relating to disclaimers for establishing novelty over “novelty only” prior art or accidental anticipations of the claimed invention, and 2.3 which confirms that it is not possible to introduce an unsupported disclaimer render a claim inventive over prior art.

The Question

The following question was referred to the Enlarged Board of Appeal:

“Does a disclaimer infringe Article 123(2) EPC is its subject matter was disclosed as an embodiment of the invention in the application as filed”

The Decision

1a. An amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed infringes Article 123(2) EPC if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.

1b. Determining whether or not that is the case requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after the amendment.

The new decision suggests that a disclaimer of a feature disclosed in relation to an embodiment may be allowable if it is possible to derive the remaining features of the claim in combination elsewhere in the application. (And, presumably, the test for “explicitly or implicitly, directly and unambiguously disclosed” is in line with

One could imagine this being the case, for example, where a feature was disclosed in the detailed description of an example embodiment of the invention, but not present in the key statement(s) of invention. Alternatively, it might be possible to include such a disclaimer if the feature to be disclaimed did not appear in all of the example embodiments.

This said, 1b appears to provide some limits. In light of 1b, it is hard to imagine successfully disclaiming a preferred feature of a key dependent claim, appearing in the specification alongside effusive discussion of its additional advantages, for example.

Finally, it will remain the case that the allowability of any unsupported disclaimers will be additionally assessed against the criteria set out in G 1/03.

As with all decisions of the Enlarged Board of Appeal, the full implications will only become apparent in time, when the decision has been applied to actual cases.