DISCLAIMER PRACTICE AT THE EPO
Summary
Under European practice special conditions apply when making an amendment
that involves a negative claim limitation (a disclaimer).
A disclaimer of subject-matter that was originally disclosed in the application as
an embodiment of the invention is known as a “disclosed disclaimer”. In Decision
G2/101 the EPO’s Enlarged Board of Appeal ruled that disclosed disclaimers are
allowable in principle. However, a disclosed disclaimer will only be permitted if
the subject-matter remaining in the claim is “directly and unambiguously
disclosed” in the application as filed. A case-specific “technical assessment” is
necessary to decide whether this requirement has been met.
In its earlier decision G1/032, the Enlarged Board also outlined some exceptional
situations where it may be allowable to disclaim subject-matter that was not
disclosed at all in the original application (an “undisclosed disclaimer”). The
discussion in G2/10 implies that an undisclosed disclaimer in accordance with
G1/03 should be subjected to the same “technical assessment” as a disclosed
disclaimer.
Background
A disclaimer is a negative claim feature. Its effect is to exclude some specific
subject-matter from the scope of a claim.
Where a claim of an application as filed contains a disclaimer this generally does not
cause problems under European practice (provided that the scope of protection
sought is clear). However, like any other amendment, introduction of a disclaimer
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2
http://www.epo.org/law-practice/case-law-appeals/pdf/g100002ex1.pdf
http://www.epo.org/law-practice/case-law-appeals/pdf/g030001ex1.pdf
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into a claim after filing must be examined to confirm that it does not add subjectmatter to the application3.
It is unusual for an application as filed to contain explicit support for a negative
claim feature (e.g. “[Invention] preferably does not include [Disclaimed subjectmatter]”). Much more commonly, the intended disclaimer will not have been
disclosed in the original application at all (an undisclosed disclaimer) or will have
been originally disclosed as an embodiment of the invention (a disclosed disclaimer).
Under these circumstances a careful assessment will be required to determine
whether introduction of the disclaimer is permissible.
G2/10: Assessment of “disclosed disclaimers”
In this Decision, the EPO’s Enlarged Board of Appeal considered whether there is an
impermissible addition of subject-matter when an amendment is made to include a
disclaimer that was originally disclosed as an embodiment of the invention. The
Decision arose due to a conflict in the Board of Appeal case law. For example, in
Decision T1102/00 it was suggested that subject-matter could only be excluded if it
was expressly disclosed as subject-matter to be excluded from protection. On the
other hand T1107/06 suggested a more liberal approach.
The Enlarged Board rejected the two extreme positions. Thus, it was held that there
is no absolute bar on the use of a disclosed disclaimer. However, the Board also held
that a disclosed disclaimer cannot be assumed to be always allowable.
The Enlarged Board emphasised that a disclosed disclaimer should not be permitted
if the subject-matter remaining in the claim after the introduction of the disclaimer
is not “directly and unambiguously disclosed”. Further, the Board ruled that
“[d]etermining whether or not that is the case requires a technical assessment of
the overall technical circumstances of the individual case under consideration,
taking into account the nature and extent of the disclosure in the application as
filed, the nature and extent of the disclaimed subject-matter and its relationship
with the subject-matter remaining in the claim after the amendment”.
It is therefore clear that assessment of a disclosed disclaimer must have regard to
the specific facts of the application at issue. The detailed reasoning in G2/10 is
complex and it is not yet fully clear how the required “technical assessment” will be
implemented by the Examining Divisions, Opposition Divisions and Boards of Appeal
at the EPO. Nonetheless, the following general observations do emerge:
●
3
Where a generally worded claim embraces many specific embodiments of an
invention, and the disclosed disclaimer is based on a single such embodiment
(e.g. the subject-matter of one of a number of working Examples), this is likely
to be allowable. That is because the subject-matter remaining in the amended
claim does not contain new “technical information” or result in the “singling
Article 123(2) EPC prohibits amendments that introduce new subject-matter to an application after
filing. This provision is interpreted extremely strictly by the EPO.
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out” of other embodiments that were not specifically disclosed in the original
application.
●
On the other hand, a disclosed disclaimer will not be allowed if it results in an
amended claim that has special technical characteristics not disclosed in the
original application or in which particular combinations of features have been
singled out in a manner not disclosed in the original application. That is
because the subject-matter in the amended claim would then contain new
“technical information” compared with the originally filed application.
The practical examples set out in the attached Annex may assist with understanding
the nature of the technical assessment envisaged in G2/10.
G1/03: Assessment of “undisclosed disclaimers”
In this Decision, the EPO’s Enlarged Board of Appeal outlined the following
exceptional circumstances4 where an undisclosed disclaimer could be permitted:
(a) to restore novelty over disclosure in an earlier unpublished European
application citable for novelty only in accordance with Article 54(3) EPC;
(b) to restore novelty over an “accidental anticipation” contained in a prior art
document; an anticipation is “accidental” if it is so unrelated to and remote
from the claimed invention that the person skilled in the art would never
have taken it into consideration when making the invention;
(c) to disclaim subject-matter that is excluded from patentability for nontechnical reasons (e.g., a method of medical treatment).
The Enlarged Board added the following conditions:
(i) The disclaimer should not remove more than is necessary either to restore
novelty or to disclaim subject-matter excluded from patentability for nontechnical reasons.
(ii) A disclaimer which is or becomes relevant for the assessment of inventive
step or sufficiency of disclosure adds subject-matter contrary to Article 123(2)
EPC.
(iii) A claim containing a disclaimer must meet the requirements of clarity and
conciseness of Article 84 EPC.
Prior to G2/10, assessment of an undisclosed disclaimer typically involved firstly
identifying that one of the exceptional circumstances (a)-(c) applied, and then
checking for compliance with the additional conditions (i)-(iii).
4
These exceptional circumstances define situations where the Applicant’s ability to obtain claims of
satisfactory scope would otherwise be unduly prejudiced through no fault of their own or for entirely
non-technical reasons.
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However, the discussion in G2/10 implies that an undisclosed disclaimer in
accordance with G1/03 ought to be subjected to the same “technical assessment” as
a disclosed disclaimer. Several Technical Board of Appeal decisions issued since
G2/10 have followed this approach5. It is therefore possible that some undisclosed
disclaimers previously accepted by the EPO may now fail in view of the technical
assessment requirement set out in G2/10. Again, some practical examples are
described in the attached Annex.
Summary
Amendments involving disclaimers require thorough consideration under European
practice. Both disclosed and undisclosed disclaimers are permissible under
appropriate circumstances. However careful analysis of the facts of the case at issue
is essential, so that the best decision can be made about whether to introduce a
disclaimer into a claim or to seek an alternative, albeit potentially more restrictive,
positive claim limitation.
1 November 2013
© J A Kemp
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London WC1R 5JJ
UK
+ 44 20 3077 8600
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5
See, for example, T2464/10, T1870/08 and T1176/09.
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Annex: Practical Examples Involving Assessment of Disclaimers
Claim
Desired
disclaimer
Disclosure of
disclaimer
Chemical compound
defined using general
formula
Single compound
As an embodiment of Likely to be allowable as a G2/10
falling within scope the invention in the disclosed disclaimer, particularly if
of general formula application
the disclaimed compound is only
one of many compounds specifically
disclosed in the application as filed
(no new “technical information”)
Chemical compound
defined using general
formula
Single compound
No disclosure in
falling within scope application
of general formula
Chemical compound
defined using general
formula
Single compound
Disclosed in a
Likely to be allowable as a G1/03
falling within scope novelty-only prior
undisclosed disclaimer (and to pass
of general formula art document citable “technical assessment” of G2/10)
under Article 54(3)
EPC
Chemical compound
defined using general
formula, for use in
treating cancer
Single compound
Disclosed in a prior
falling within scope art document as a
of general formula dye compound
Likely to be allowable as a G1/03
undisclosed disclaimer against an
“accidental anticipation” (and to
pass “technical assessment” of
G2/10)
Chemical compound
defined using general
formula, for use in
treating cancer
Single compound
Disclosed in a prior
falling within scope art document as an
of general formula analgesic
No - not an “accidental
anticipation” according to current
Board of Appeal case law and so
not an acceptable G1/03
undisclosed disclaimer
Chemical compound
defined using general
formula, for use in
treating cancer
Single compound
Disclosed in a prior
falling within scope art document as an
of general formula analgesic; also
disclosed as an
embodiment of the
invention in the
application
May be allowable as a G2/10
disclosed disclaimer
Method of reducing
weight of a human
subject
Therapeutic (i.e.,
No disclosure in
non-cosmetic)
application
method of reducing
weight of a human
subject
Likely to be allowable as G1/03
undisclosed disclaimer as disclaimer
of “therapeutic method” is for
purely non-technical reasons
Chemical compound
where substituent A is
methyl, ethyl or
propyl and substituent
B is methyl, ethyl or
propyl
Chemical
compound where
at least one of
substituents A and
B is either ethyl or
propyl
As an embodiment of Unlikely to be allowable under
the invention in the G2/10, because disclaimer results
application
in “singling out” of the compound
where A is methyl and B is methyl
Chemical compound
where substituent A is
methyl, ethyl or
propyl and substituent
B is methyl, ethyl or
propyl
Chemical
compound where
at least one of
substituents A and
B is either ethyl or
propyl
Disclosed in a
novelty-only prior
art document citable
under Article 54(3)
EPC
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Allowable?
No - undisclosed disclaimer not
allowable unless an exceptional
circumstance of G1/03 applies
Unlikely to be allowable even if
G1/03 conditions are met, because
according to G2/10 there is an
impermissible “singling out” of the
compound where A is methyl and B
is methyl
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