Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

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 ros bottom lb

More from across our site

Cyril Amarchand Mangaldas has hired former Anand & Anand partner Swati Sharma and hopes to compete with specialist IP firms
Rapporteur-Judge András Kupecz ruled that education and training weren’t legitimate reasons for a member of the public to access documents
Searches for comparison prior art will be a little easier, but practitioners will have to put more thought into claim construction and design patent titles
The Helsinki local division rejected AIM Sport’s request for a preliminary injunction in a dispute with rival Supponor
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The FTC’s plans to scrutinise improperly listed Orange Book patents could make these listings more important in litigation, but firms should be looking at this anyway
Counsel at Debevoise & Plimpton explain how they helped food delivery business Grubhub avoid a preliminary injunction at the Court of Appeals for the Seventh Circuit
European lawyers tell Managing IP how the legal market is reacting to the first few months of the UPC and why cases are set to take off
The ban could be extended or cancelled, depending on whether Judge Pauline Newman cooperates with an investigation, the Judicial Council of the Federal Circuit stated
Sources say some China-based lawyers are prepared to take large pay cuts to join stable practices, but most firms are sceptical about new hires