In the recent decision G 1/16, the Enlarged Board of Appeal has provided clarification as to the test to be applied when examining the allowability, according to Article 123(2) EPC, of a claim that has been amended to include an undisclosed disclaimer.

A disclaimer recites “negative” features in a patent claim, i.e. features which describe elements and characteristics that the claimed subject matter does not have. A disclosed disclaimer is one in which either the disclaimer itself has been disclosed in the application as filed, or the disclaimer itself has not been disclosed in the application as filed but the subject matter excluded by it does have basis in the original application (e.g. in an embodiment). Conversely, an undisclosed disclaimer is one in which neither the disclaimer itself, nor the subject matter excluded by it, have been disclosed in the application as filed.

G 1/03 set out a test for the allowability of undisclosed disclaimers according to Article 123(2) EPC, whilst G 2/10 set out a test for the allowability of disclosed disclaimers (the so-called “gold standard disclosure test”). The G 2/10 test is: would the skilled person, 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 Board in T 437/14 (who referred the questions leading to G 1/16) noted, however, that decision G 2/10 suggested the gold standard disclosure test applied in the assessment of any amendment, including undisclosed disclaimers, for compliance with Article 123(2) EPC. There has also been a lack of uniformity in the approach adopted in cases following G 2/10 regarding whether G 2/10 is applicable to undisclosed disclaimers. The following questions were therefore referred to the Enlarged Board of Appeal by the Board in T 437/14:

  1. Is the standard referred to in G 2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC 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?
  3. If the answer to the second question is no, i.e. if the exceptions relating to undisclosed disclaimers of G 1/03 apply in addition to the gold standard referred to in G 2/10, is the G 2/10 standard to be modified in view of these exceptions?

G 1/03 decision

G 1/03 states that the introduction of an undisclosed disclaimer is allowable in order to:

(a) restore novelty by delimiting a claim against novelty-only prior art (i.e. prior art under Article 54(3) EPC);

(b) restore novelty by delimiting a claim against an accidental anticipation (an anticipation is accidental if it is so unrelated and remote from the claimed invention that the skilled person would never have taken it into consideration when making the invention); or

(c) disclaim subject matter which is excluded from patentability for non-technical reasons (e.g. plant or animal varieties).

Furthermore, the introduction of the undisclosed disclaimer must not provide a technical contribution to the subject matter disclosed in the application as filed. More specifically, it should not be or become relevant for the assessment of inventive step or sufficiency of disclosure, nor must it remove more than is necessary either to restore novelty or to disclaim subject matter excluded from patentability for non-technical reasons.

G 2/10 decision

G 2/10 states that the introduction of a disclosed disclaimer will infringe Article 123(2) EPC if 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 (the gold standard disclosure test).

G 1/16 decision

In G 1/16, the Enlarged Board began by reaffirming the finding of decision G 2/10 that the gold standard disclosure test is the appropriate way to assess the allowability of a disclosed disclaimer under Article 123(2) EPC and that this is the only test to be met.

The Enlarged Board went on to state that the application of the same test to a claim amended to include an undisclosed disclaimer leaves “virtually no chance of an undisclosed disclaimer being allowable”. The Enlarged Board ruled that the proper test for assessing whether the introduction of an undisclosed disclaimer contravenes Article 123(2) EPC is whether the criteria of G 1/03 are fulfilled. Furthermore, the assessment is governed exclusively by these criteria and “no modifications are to be made to, nor any conditions added which go beyond, the criteria of G 1/03”. The Enlarged Board therefore answered the first question referred to it in the negative, and considered that questions 2 and 3 did not then need to be answered.

With regard to the requirement that an undisclosed disclaimer must not provide a technical contribution to the subject matter disclosed in the application as filed, the Enlarged Board further stated that “the question to be asked is not whether an undisclosed disclaimer quantitatively reduces the original technical teaching but rather whether it qualitatively changes it in the sense that the applicant’s or patent proprietor’s positon with regard to other requirements for patentability is improved”. If so, the original technical teaching of the application is changed by introduction of the disclaimer and so the amendment contravenes Article 123(2) EPC.

In summary, an amendment to introduce an undisclosed disclaimer into a claim for any of reasons (a)-(c) listed above, and which does not provide a technical contribution to the subject matter disclosed in the application as filed, will be considered to meet the requirements of Article 123(2) EPC. If these criteria are met, it is not necessary to consider whether the subject matter remaining in the claim after the introduction of the disclaimer is directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed (i.e. it is not necessary to apply the gold standard disclosure test).

The purpose of Article 123(2) EPC is to ensure that an applicant or proprietor is not allowed to improve his position by adding subject matter that was not disclosed in the application as filed as this would give him an unfair advantage and could also result in uncertainty for third parties relying on the content of the application as filed. The Enlarged Board’s decision in G 1/16 therefore provides welcome clarification on the allowability under Article 123(2) EPC of claims amended to include undisclosed disclaimers.