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Clarification on Undisclosed Disclaimers provided by EPO Enlarged Board of Appeal

22 December 2017

A decision by the EPO Enlarged Board of Appeal has been published with respect to some questions raised in relation to undisclosed disclaimers.  Undisclosed disclaimers are a common means of amending a claim to exclude subject that: a) is disclosed in an earlier patent document under Article 54(3) EPC; b) represents an accidental anticipation in an earlier document under Article 54(2) EPC; or c) relates to non-technical subject matter.

Following on from the decisions G 1/03 and G 2/10, the Board was asked whether a claim containing an undisclosed disclaimer was required to meet the “gold standard” under Article 123(2) i.e. said subject matter was clearly an unambiguously disclosed in the application as filed.  If confirmed, this would have run contrary to the established practice laid down in G 1/03 and made it essentially impossible to use undisclosed disclaimers.

However, the decision makes clear that the test laid down in G 1/03 is proper and that the “gold standard” test does NOT apply to undisclosed disclaimers.  However, the Board provided some helpful guidance on how G 1/03 ought to be interpreted.

For the purpose of considering whether a claim amended by the introduction of an undisclosed disclaimer is allowable under Article 123(2) EPC, the disclaimer must fulfil one of the criteria set out in points 2.1 of the order of decision G 1/03 [i.e. one of a), b) or c) above].

The introduction of such a disclaimer may not provide a technical contribution to the subject matter disclosed in the application as filed.  In particular, it may not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure.  The disclaimer may not remove more than necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.

This decision therefore confirms that undisclosed disclaimers are still a useful tool to work around certain situations but emphasises the need for extreme care whenever they are employed.  A link to the decision is provided here: G 1/16.

For further information, please contact your usual Withers & Rogers representative.

Bruce Dean
Life Sciences & Chemistry group

This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Withers & Rogers LLP, December 2017