EPO: Enlarged Board confirms old disclaimer practice

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

EPO: Enlarged Board confirms old disclaimer practice

The EPO's Enlarged Board of Appeal (EBA) recently issued its long-awaited decision G 1/16 relating to undisclosed disclaimers. The decision lays down under which circumstances the introduction during prosecution of a patent application before the EPO of a disclaimer not disclosed in the application as filed may be allowable under Article 123(2) EPC. The decision essentially confirms the standard defined in decision G 1/03 of 2004.

Decision G 1/16 is the third EBA decision dealing with disclaimers. In decision G 1/03 of 2004, the EBA ruled that an undisclosed disclaimer may be allowable, in spite of support in the application as filed, to restore novelty over prior art cited under Article 54(3) EPC (i.e. a prior European patent application not published at the filing date of the application under examination), to restore novelty over an "accidental" anticipation, or to remove subject-matter excluded from patentability for non-technical reasons.

Later on, in 2011, the EBA scrutinized the allowability of disclaimers which do in fact have a basis in the application as filed. In the decision dealing with that issue, G 2/10 of 2011, the EBA arrived at the conclusion that a disclosed disclaimer is allowed only if the subject-matter remaining in the claim after the introduction of the disclaimer is directly and unambiguously derivable from the application as filed. It did, however, remain unclear whether or not this standard should apply also to undisclosed disclaimers.

The uncertainty to this effect has now been removed by decision G 1/16, according to which the "directly and unambiguously derivable" criterion – the so-called "gold standard" – does not apply to undisclosed disclaimers. Rather, the EBA expressly endorses the practice developed in decision G 1/03, whilst underlining that an undisclosed disclaimer may not provide a technical contribution, notably in relation to the assessment of inventive step or for the question of sufficiency of disclosure.

frederiksen.jpg

Jakob Pade Frederiksen


Inspicos P/SKogle Allé 2DK-2970 HoersholmCopenhagen, DenmarkTel: +45 7070 2422Fax: +45 7070 2423info@inspicos.comwww.inspicos.com

more from across site and SHARED ros bottom lb

More from across our site

More than 80 women have entered the top 250 list this year, which includes trailblazing practitioners from more than 50 jurisdictions
IP STARS, Managing IP’s accreditation title, reveals its latest trademark rankings and discloses which firms dominated their respective markets
Today’s rankings release marks a special moment in Managing IP’s calendar, and lawyers should feel proud of their achievements
A new dispute involving Mondelēz and Aldi, and a copyright ruling related to 'Eleanor’ Ford Mustangs were also among the top talking points this week
Via LA’s Qi wireless charging patent pool now covers more than 50% of all SEPs in the space
Vida Panganiban-Alindogan at SyCip Salazar Hernandez & Gatmaitan discusses IP valuation and why no IP practice area is more important than the other
The IP team at Morais Leitão discusses high-stakes litigation, strategic partnerships with clients, and bolstering cross-border expertise
Eszter Szakács discusses 5.30 am wake-ups, legal mind games, and eating Nutella in the middle of the night
Counsel explain how AI can create brand protection headaches, but also be used to fight fakes
An AI copyright update in the UK and IP protection efforts by Temu and WeChat were also among the top talking points this week
Gift this article