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To summarise, an undisclosed disclaimer may be allowable in order to:
- restore novelty by delimiting a claim against the state of the art under Articles 54(3) and (4) EPC
- restore novelty by delimiting a claim against an accidental anticipation under Art. 54(2) EPC
The Enlarged Board emphasised that, in defining the situations in which a disclaimer might be allowed, care had been taken to make sure that the reason justifying a disclaimer was not related to the teaching of the invention.
It disagreed with the view that, starting from the premise that a disclaimer was always a mere waiver of part of the invention, it might be used for any purpose, i.e. also for excluding non-working embodiments. The Enlarged Board held that a claim comprising non-working embodiments might have different consequences, depending on the circumstances.
According to the Enlarged Board, where there was a large number of conceivable alternatives and the specification contained sufficient information on the relevant criteria for finding appropriate alternatives over the claimed range with reasonable effort, the inclusion of non-working embodiments was of no harm. Therefore, a disclaimer was neither necessary nor appropriate.
If this was not the case and there was a lack of reproducibility of the claimed invention, this might become relevant under the requirements of inventive step or sufficiency of disclosure. The determining date for fulfilling the latter requirement had to be the date of filing or priority, and deficiencies in this respect could not be remedied during the proceedings before the EPO (differing from T 170/87 and T 313/86).
This decision of the Enlarged Board of Appeal overruled the more restrictive approach in T 323/97, which had laid down that any amendment to a claim which was not supported by the application as originally filed and which was intended to delimit the claimed subject-matter further vis-à-vis the state of the art was in breach of Art. 123(2) EPC 1973. In addition, the limits within which disclaimers were admissible was more precisely defined, making some of the earlier jurisprudence obsolete (see T 313/86, T 623/91, T 1050/93). According to these decisions, a disclaimer should also be admissible when a sub-range of the invention's subject-matter defined in terms of ranges was to be excluded not in the light of the prior art but because it did not solve the technical problem.