A new referral, G2/10, is pending before the Enlarged Board of Appeal (EBA) of the European Patent Office. The question to be considered by the EBA is the following: does a disclaimer infringe Article 123(2) EPC if its subject matter was disclosed as an embodiment of the invention in the application as filed?
The patent application under appeal describes and claims a generic class of catalytic DNA molecules developed from, and encompassing, certain prototype molecules. As a disclaimer for the prototype molecules was added to the claims, the referring appeal board noted that, in recent years, there had been a divergence in the case law of the Boards of Appeal and consequently referred the above question to the EBA.
A disclaimer is a negative claim limitation, which expressly excludes subject matter from the scope of the claim. With the present case in mind, one can essentially define three types of situations where, in the application as filed, the subject matter of the disclaimer is:
(1) disclaimed
(2) not even mentioned; or
(3) disclosed as an embodiment of the invention.
The EBA landmark decisions G1/03 and G2/03 laid out the principles for the use of disclaimers. According to their ruling, a disclaimer may not be refused under Article 123(2) (that is, as extension of subject matter) 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. However, they defined strict criteria for assessing whether a disclaimer which is not disclosed in the application, an "undisclosed" disclaimer, is allowable. A type 2 disclaimer is clearly undisclosed. A type 1 disclaimer typically does not infringe Article 123(2).
The referral relates to the type 3 situation. Some Boards of Appeal have considered such disclaimers as undisclosed, hence falling under the strict G1/03 criteria (eg T1050/99). Other Boards have argued that the undisclosed disclaimer of the G1/03 decision was not meant to encompass the type 3 situation (eg T1107/06).
Previous EPO Guidelines for Examination indeed permitted making a disclaimer to "remove non-patentable embodiments disclosed in the application as filed". In the April 2010 edition, however, a more restrictive view had been adopted, where type 3 disclaimers are considered as undisclosed disclaimers (Guidelines, section C-III 4.20).
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