Allowability of Disclaimers in patent - Decision G 1/03
26.06.2004
On April 8, 2004, the Enlarged Board of Appeal of the European Patent Office disclosed two decisions G 1/03 - G 2/03 relative to the allowability of disclaimers (negative feature) during a patent examination or opposition.
On April 8, 2004, the Enlarged Board of Appeal of the European Patent Office disclosed two decisions G 1/03 - G 2/03 relative to the allowability of disclaimers (negative feature) during a patent examination or opposition.The question of disclaimer has been raised by Technical Boards of Appeal 3.3.4. and 3.3.5. in two decisions.Indeed, in the proceedings which gave rise to the referral, the proprietors use disclaimers, not supported by the application as filed, in order to overcome novelty objections based on Article 54(3) and (4) (document opposable only against novelty) or on Article 54(2) EPC (document opposable against both novelty and inventive step).The established case law regarding the disclaimer was the following :- Earlier case law admitted disclaimer used to overcome a novelty objection without considering the support of the negative feature.- However, according to decision T 323/97, a disclaimer has has to be studied in view of Article 123(2) and (3) EPC (amendments have to be disclosed in the application as filed). Therefore, a disclaimer not disclosed by the application should not be accepted. The decision of G 1/93 has also to be considered regarding the interpretation of Article 123 EPC. An added feature is not to be considered as subject - matter extending beyond the content of the application as filed, if it does not provide any technical contribution to the invention.In view of the precise questions set of by the Technical Boards of Appeal, the President of the EPO has enlarged the question to also consider a disclaimer done for other reasons.I Novelty1 - Disclaimer against an objection based on Article 54(3) and (4) EPC - Conflicting applicationsThe Enlarged Board of Appeal has reminded the purpose of this Article : to avoid to deliver a European Patent for an object already filed (even if not claimed : "whole content approach") as a European Patent but not known from the applicant because not published at the date of filing of the second EP application.In view of this approach, a disclaimer is justified and is not in contradiction to Article 123(2) EPC as the subject-matter remaining claimed after the disclaimer is not modified by it.2 - Disclaimer against an objection based on Article 54(2) EPC - Accidental anticipationA disclosure which is accidentally novelty-destroying often occurs when one single chemical compound falling within a claimed group is already known for a different use.According to the relevant case law, such accidental anticipation is completely irrelevant for examining invenive step.Therefore, a disclaimer excluding the subject-matter of an accidental anticipation may be assumed not to change the technical information in the application as filed and, for this reason, also not change its subject-matter, within the meaning or Article 123(2) EPC.3 - Disclaimer against an objection based on Article 54(2) EPC - Non accidental anticipationA non accidental anticipation will also be studied for examining the inventive step of the claimed invention. Therefore, there is no use to exclude it by a disclaimer for responding to a novelty objection.II - Exceptions to patentabilityThe Enlarged Board of Appeal also indicated that it should be allowed to exclude from the claimed invention some case that are patentable, for example because of" morality, for example exclusion of the human beings in a claim for a method of medical treatment for mammals, avoiding the limitation to the specific example of the mammal disclosed in the Examples ; indeed such disclaimer has nothing to do with the technical teaching ;- lack of industrial application, for example, exclusion for a method for contraception when applied only in the private sphere, whereas the application to domestic animals is patentable.III - Non-working embodimentsIf a claim comprises non-working embodiment and no elements may be found in the specification for limiting the claim, then there is either a problem of lack of sufficient disclosure or a problem of inventive step. These cannot be resolved by a disclaimer.Therefore, decisions T 170/87 and T 313/86 which allowed a disclaimer for responding to an unsufficiency of disclosure are not to be followed.IV - Disclaimers making a technical contributionIf it becomes apparent that the limitation done by disclaimer is relevant for assessing inventive step or sufficiency of disclosure, the allowibility of the disclaimer may be called into question, even ex post.V - Drafting of disclaimersThe Enlarged Board of Appeal has underlined that :- the necessity of a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily. Therefore, the disclaimer should not remove more that is necessary ;- the requirement of consiseness and clarity of Article 84 EPC are also applicable to claims containing disclaimers. Therefore, a disclaimer is not allowable if the necessary limitation can be expressed in simpler terms in positive, originally disclosed features. Furthermore, it may be possible to adapt the terminology of prior disclosure in order to exclude what is necessary to restore novelty ;- the excluded prior art should be added in the specification in accordance with Rule 27(1) (b) EPC and the relation between the prior art and the disclaimer should be shown.VI - Disclaimer and priorityThe Enlarged Board of Appeal has also indicated, in view of decison G 2/98 regarding the priority right, that the introduction of a disclaimer is also allowable when drafting and filing a European Patent application without affecting the right to priority from the first application, which does not contain the disclaimer.OrderIn view of all these points, the Enlarged Board of Appeal has decided that :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 Ã 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.
