The use of undisclosed disclaimers in a filed application has been practiced since the start of the EPC (European Patent Convention) and was codified in G 1/03. According to this decision, three exceptions[i] from the general principle (a patent or patent application may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed (Art. 123(2)) were established.
In a second decision, the EBA (Enlarged Board of Appeal) in G 2/10 had to deal with disclosed disclaimers, i.e. disclaimers that formed part of the original application. The EBA decided that ‘the test to be applied is 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’. The test is sometimes referred to as the ‘Gold Standard’.
Since G 1/03 relates to undisclosed disclaimers and G 2/10 relates to disclosed disclaimers, they should complement each other. However, the comments in G 2/10 give the referring board in T 437/14 reason to believe that the Gold Standard should apply in addition to the exceptions or even as the sole standard. Therefore, the EBA will have the opportunity to revisit the disclaimer issue for the third time and hopefully finally resolve it.
After the G 2/10 decision, the various boards have struggled to deal with the two tests. In some decisions only the exceptions in G 1/03 are applied, while in other decisions different ways to accommodate the Gold Standard in the exceptions of G 1/03 have been explored. When the Gold Standard was applied strictly (as in T 748/09) the board did not allow the disclaimer. However, when the Gold Standard is applied in a modified form the disclaimers stand a better chance. In at least two instances (T 1870/08 and T2018/08) different modified Gold Standards are applied. Therefore, the EBA has the opportunity to determine the modified standards for disclaimers in the event the exceptions of G 1/03 apply in addition to the Gold Standard of G 2/10.
[i] The three exceptions relate to disclaimers not disclosed in the application as filed and introduced in a claim in order to
- restore novelty by delimiting the claim against the state of the of the art disclosed in a European patent application filed prior but published after the relevant date (Art. 54(3) and (4) EPC),
- restore novelty by delimiting a claim against an accidental anticipation, i.e. an anticipation 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 excluded from patentability for non-technical reasons.
Torben Raven Rasmussen, Partner – European Patent Attorney
