New Decision from EPO Enlarged Board of Appeal G1/16 Regarding Disclaimers

By: Francesca Giovannini

A disclaimer is a “negative” feature, i.e., a feature describing elements and characteristics that the claimed subject-matter does not have. An amendment based on a disclaimer, as any amendment made to a European patent application or patent, has to comply with the requirements of Art. 123(2) EPC (added subject-matter). For example, when a claim referencing a composition which comprises a metal element is amended to disclaim copper (e.g. “a composition comprising a metal element, wherein the metal element is not copper”), this amendment is then evaluated by European Examiners in patent prosecution and by Opposition Divisions in opposition proceedings to determine whether the amendment adds subject-matter extending beyond the content of the application as filed, as required by Art. 123(2) EPC.

While it has been made clear, at least since decision G2/10 relating to disclosed disclaimers, that disclaiming copper from the claimed composition does not add fresh subject-matter if the application as filed directly and unambiguously discloses copper as an embodiment or an example of a metal element which may form part of the composition, conflicting decisions of the Technical Boards of Appeal have been given with respect to applications which do not disclose any embodiment including copper (undisclosed disclaimer). In the former case, the so-called “gold standard”, requiring a direct and unambiguous disclosure as established by earlier decisions and as adopted by decision G2/10 in the assessment of the compliance of disclosed disclaimers with Art. 123(2) EPC, was deemed to have been met because of the disclosure of the embodiment. In the latter case, different outcomes have been achieved by the EPO case law, resulting in legal uncertainty for patent applicants and proprietors. In some cases, undisclosed disclaimers have been allowed under Art. 123(2) EPC following the criteria set by decision G1/03. In other cases, undisclosed disclaimers have not been allowed based on the gold standard, in some cases applied in a modified form, of decision G2/10. When neither the subject-matter excluded by the disclaimer nor the disclaimer per se have been disclosed in the application as filed, decision G1/03 has established that the disclaimer is nevertheless admissible under Art. 123(2) EPC in either of the following cases:

(i) to restore novelty over a prior art reference filed prior to the filing (or priority) date of the application at issue but published thereafter (prior art under Art. 54(3) EPC); or

(ii) to restore novelty over accidental anticipation under Art. 54(2) EPC, where accidental is interpreted to be 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; or

(iii) to remove subject-matter which, under Art. 52 to Art. 57 EPC, is excluded from patentability for non-technical reasons.

Decision G1/16 of the Enlarged Board of Appeal, issued in December 2017, has clarified which standard should be applied with respect to disclaimers. In particular, decision G1/16 has established that:

(a) the gold standard of decision G2/10 applies to disclosed disclaimers, but does not apply to undisclosed disclaimers;

(b) decision G1/03 defines specific exceptions to this gold standard; and

(c) undisclosed disclaimers are allowable under Art. 123(2) EPC when they comply with any of the three criteria (i)-(iii) set out in decision G1/03.

G1/16 has also confirmed that the disclaimer should not provide a technical contribution to the subject-matter disclosed in the application as filed. Furthermore, the applicant/proprietor’s position with regard to other requirements for patentability should not be improved, and undisclosed disclaimers different than those complying with any of the three criteria (i)-(iii) listed in G1/03 (such as those used to overcome non-accidental anticipations and to exclude non-working embodiments) are not open to assessment under the gold standard disclosure test of decision G2/10.

Consequently, if copper is disclosed in the application as filed, no fresh subject-matter is added by disclaiming copper whenever the disclosure of copper is direct and unambiguous. This may be the case of an application literally disclosing copper, but also, for example, an application disclosing a metal element with atomic number 29.

On the other hand, if copper is not disclosed in the application as filed, then disclaiming copper may be deemed to be in line with Art. 123(2) EPC if:

(i) copper is disclosed in a prior art reference filed before the filing date (or priority date, if any) of the application at issue but published thereafter; or

(ii) copper is accidentally disclosed in a prior art reference published before the filing date (or priority date, if any) of the application at issue and related to, for example, a composition for manufacturing a heat-resistant metal tube to be used in aerospace or in the petrochemical industry, whereas the application at issue relates to a composition for manufacturing a watch spring having enhanced elasticity.

Criterion (iii) of decision G1/03 may be useful, for example, in disclaiming methods for medical treatment of the human body, human embryonic cells, inventions contrary to public morality, etc.

Decision G1/16 is welcomed in that it reiterates the admissibility of undisclosed disclaimers before the EPO and maintenance of the specific criteria set by G1/03 to assess the compliance of undisclosed disclaimers with Art. 123(2) EPC.