Those familiar with European patent practice will be aware of the strict European approach to “added subject-matter” under Article 123(2) EPC. Under such practice, an amendment to a claim can only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, from the specification as originally filed (referred to as the “gold standard”). Developments in EPO case law led to an open question on how Article 123(2) EPC is to be applied to “disclaimers”, and in particular so-called “undisclosed disclaimers”. In decision G1/16, the Enlarged Board of Appeal has provided clarification on this matter.
While patent claims will typically define claimed subject-matter by reciting technical features that a claimed invention must include (so-called “positive” claim features), it is also possible for claims to define the claimed subject-matter by stating what elements of features the claimed invention does not include (so-called “negative” claim features). Such negative claim features are referred to as “disclaimers”.
Disclaimers are divided into two classes – disclosed disclaimers (where the disclaimer is disclosed in the application as originally filed), and undisclosed disclaimers (where the disclaimer is not disclosed in the application as originally filed).
Background to the decision – previous decisions G1/03 and G2/10
While an amendment to a patent claim to include an undisclosed disclaimer might appear, by definition, to contradict the requirements of Article 123(2) EPC, the EPO has previously recognised that in certain circumstances it would be equitable to allow such an amendment – for example, if the undisclosed disclaimer did not provide a technical contribution to the claim, but was required to fulfil certain legal requirements of the European Patent Convention.
The case law of the Boards of Appeal therefore developed an approach where a disclaimer may be considered to fulfil the requirements of Article 123(2) EPC, even if that disclaimer was not disclosed in the application as originally filed, if certain criteria were met. These criteria for assessment of these undisclosed disclaimers were set out by the Enlarged Board of Appeal in G1/03:
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.
However, the above criteria for assessment of undisclosed disclaimers were subsequently called into question with decision G2/10, in which the Enlarged Board of Appeal responded to questions in respect of disclosed disclaimers. In G2/10, the Enlarged Board emphasised that for disclosed disclaimers, the criteria of G1/03 did not apply, and the only test was under the above-defined gold standard (i.e. the disclosed disclaimer must be directly and unambiguously derivable from the specification as originally filed)
While the Enlarged Board of G2/10 stated that the criteria of G1/03 for undisclosed disclaimers did not apply to disclosed disclaimers, it was silent on the application of the gold standard to undisclosed disclaimers. Furthermore, it was possible to interpret certain passages of the G2/10 decision to infer that the Enlarged Board intended the gold standard to apply to undisclosed disclaimers as well. This led to ambiguities regarding which criteria should be applied to the assessment of Article 123(2) EPC for undisclosed disclaimers, and in particular whether the gold standard should apply equally to both undisclosed disclaimers and disclosed disclaimers.
Clarifying the law: decision G1/16
In view of the above, the following questions were referred to the Enlarged Board of Appeal in G1/16:
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 issuing its decision, the Enlarged Board considered previous decisions of EPO Boards of Appeal, national jurisprudence, and the interpretation of Article 123(2) EPC. It considered the legal, non-technical reasons for allowing non-disclosed disclaimers in G1/03, as well as the broader aim of Article 123(2) EPC of preventing an applicant or patent proprietor from improving his position by adding into the claim subject-matter not disclosed in the application as originally filed.
The Enlarged Board came to a decision that emphasised that there is a fundamental distinction, in terms of their legal nature, between “undisclosed disclaimers” and “disclosed disclaimers”. That distinction “necessitates providing for each of the two classes of disclaimer a single specific test for assessing whether the introduction of a given disclaimer is in compliance with Article 123(2) EPC”. The Board thus decided that the test for disclosed disclaimers is the gold standard test of G2/10, and the assessment of the allowability of a claim amendment by an undisclosed disclaimer is governed exclusively by the criteria laid down in G1/03.
The Enlarged Board thus answered question 1 above as follows: 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.
In addition to the above clarification, the Enlarged Board re-iterated that the use of an undisclosed disclaimer must not circumvent the principle that the applicant/patentee cannot be allowed to improve his position by adding subject-matter not disclosed in the application as filed. Thus, the Enlarged Board also emphasised:
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./03.
Given the above answer, questions 2 and 3 did not need to be answered.
In conclusion, the decision of the Enlarged Board of Appeal in G1/16 upholds the previous EPO practice of G1/03, providing a much appreciated clarification on EPO practice regarding the assessment of undisclosed disclaimers under Article 123(2) EPC.