As a reminder, the admissibility of disclaimers (negative limitations) is laid down in decisions G 1/03 and G 2/03 which stipulate that :
« I. 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.
II. The following criteria are to be applied for assessing the allowability of a disclaimer which is not disclosed in the application as filed:
II.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.
II.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.
II.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.
II.4 A claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC. »
Furthermore, with regard to disclosed disclaimers, decision G 2/10 defined the test to be applied (« gold standard »), i.e. 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.
In case T 0437/14, the Board of Appeal referred to the Enlarged Board of Appeal to define the test to be applied in the particular case of undisclosed disclaimers (limitation of undisclosed subject-matter) and submitted the following points of law :
« 1. Is the standard referred to in G 2/10 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?
2. If the answer to the first question is yes, is G 1/03 set aside as regards the exceptions relating to undisclosed disclaimers defined in its answer 2.1?
3. If the answer to the second question is no, i.e. if the exceptions relating to undisclosed disclaimers defined in answer 2.1 of G 1/03 apply in addition to the gold standard, may this standard be modified in view of these exceptions? »
In its decision G1/16, the Enlarged Board of Appeal recalls first that a disclaimer is undisclosed when neither the disclaimer itself nor the subject-matter excluded by it have been disclosed in the application as filed. The disclosed disclaimer itself might not have been disclosed in the application as filed, but the subject-matter excluded by it has a basis in the application as filed, e.g. in an embodiment.
It states also that the « gold standard » is applicable to undisclosed as well as to disclosed disclaimers and the admissibility test for an undisclosed disclaimer is the test stated in above-mentioned G 1/03.
Thus, according to G1/16 for « the purpose of considering whether a claim amended by the introduction of an undisclosed disclaimer is allowable under Article 123(2) EPC, the disclaimer must fulfil one of the criteria set out in point 2.1 of the order of decision G 1/03 ».
Furthermore, the question to be asked is not whether an undisclosed disclaimer quantitatively reduces the original technical teaching, which is unavoidable, but rather whether it qualitatively changes it in the sense that the applicant’s or proprietor’s position with regard to other requirements for patentability is improved. In the Enlarged Board of Appeal’s opinion, the assessment of inventive step has to be done without taking into account the undisclosed disclaimer.
Decision G1/16 concludes that the « introduction of such a disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular, it may not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure. The disclaimer may not remove more than necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons ».
