Disclaimers are negative claim features that exclude subject-matter from the scope of protection of a claim. The disclaimer may have basis in the patent application as originally filed (i.e. a disclosed disclaimer) or lack basis in the patent application as originally filed (i.e. an undisclosed disclaimer). Until now, there have been three referrals to the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO), which concern disclaimers.
The EBA decisions G 1/03 and G 2/03 (hereinafter referred to as G 1/03) established that undisclosed disclaimers may be allowable in order to restore novelty against European patent applications filed before but published after the filing date of the patent application under consideration or against prior art constituting an accidental anticipation. Further, an undisclosed disclaimer may be allowable to disclaim subject-matter excluded from patentability for non-technical reasons.
The EBA decision G 2/10 explicitly concerned disclosed disclaimers, and also established that the claimed subject-matter remaining after the introduction of a disclaimer must be explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed (the so-called gold standard test).
The present referral results from decision T 437/14 concerning a claim that had been amended by the introduction of two undisclosed disclaimers in order to disclaim novelty-destroying subject-matter disclosed in two different documents, which were considered to be accidental anticipations. In the decision the Board of Appeal (BoA) expresses the opinion that G 2/10 also concerns undisclosed disclaimers, but notes that this G decision has not been applied in a consistent way in caselaw relating to undisclosed disclaimers. Further, the outcome of the present case hinges on how G 1/03 and/or G 2/10 are applied. Therefore, the BoA referred the following questions to the EBA.
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?