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On 8 April 2004, the Enlarged Board of Appeal ruled on referrals G 1/03 and G 2/03 (OJ 2004, 413 and 448) concerning disclaimers and established the criteria to be taken into account. For a full account of the law now applicable to disclaimers, see the text of the decisions. Here, the Enlarged Board's answers to the questions it was asked to consider are set out:
1. An amendment to a claim by the introduction of a disclaimer may not be refused under Art. 123(2) EPC 1973 for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed.
2. The following criteria are to be applied for assessing the allowability of a disclaimer which is not disclosed in the application as filed:
2.1 A disclaimer may be allowable in order to:
- restore novelty by delimiting a claim against state of the art under Art. 54(3) and (4) EPC 1973;
- restore novelty by delimiting a claim against an accidental anticipation under Art. 54(2) EPC 1973; 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; and
- disclaim subject-matter which, under Articles 52 to 57 EPC 1973, is excluded from patentability for non-technical reasons.
2.2 A disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.
2.3 A disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to Art. 123(2) EPC 1973.
2.4 A claim containing a disclaimer must meet the requirements of clarity and conciseness of Art. 84 EPC 1973.
With regard to the admissibility of disclaimers reference should be made to Chapter II.B.1.2.1.