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.
Jakob Pade Frederiksen
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