Case Law of the Boards of Appeal

According to G 1/03 (OJ 2004, 413), a disclaimer may be allowable in order to restore novelty by delimiting a claim against an accidental anticipation under Art. 54(2) EPC 1973; thus the question that arose was whether or not the disclosure of D1 was accidental.

The appellant argued that the disclaimer had been made in good faith according to the Guidelines and in accordance with the practice of the boards of appeal at the time of making the disclaimer. The board pointed out that the Guidelines were not rules of law. When introducing the disclaimer into claim 1 as granted, the appellant had referred to Guidelines C-VI, 5.8b (in an earlier version). Even so, the board explained that at the time when the disclaimer was introduced, the appellant, considering the relevant case law, could not expect that a disclaimer which was relevant for the assessment of inventive step and changed the technical information in the application as filed would be allowable. The appellant's position that transitional provisions should be provided for in G 1/03 for those applicants who had relied in good faith on the previous EPO patent practice at the time of making the disclaimer failed as well, as explained by the board. The principles laid down in G 1/03 were to be applied to the present case. Since the disclosure in D1 could not be considered as accidental within the meaning of G 1/03, the disclaimer was not allowable under Art. 123(2) EPC 1973.

In T 1049/99 the board concluded that, contrary to what the respondent (patent proprietor) claimed, the skilled person would have taken the teaching of document D21 into consideration when working on the invention in search of a solution to the technical problem defined by the respondent, using appropriate and relevant means to resolve his problem in the same technical field as that of the patent in suit. Moreover, contrary to the respondent's conclusions at the hearing, the board stressed that the fact that a document was difficult to find in published prior art or was difficult for the skilled person to access was not sufficient to justify the conclusion that it constituted an accidental anticipation.

In T 788/05, the disclaimer, which was not disclosed in the application as filed (concerning Vascular catheter), was introduced by the appellant during the examination procedure with the purpose of establishing the novelty of the claimed subject-matter with respect to D1, which was then considered as a prior art document relevant under Art. 54(3) EPC 1973. A disclaimer which was not disclosed in the application as filed is only allowable if it is introduced to overcome a novelty objection based on an accidental disclosure or to delimit a claim against the state of the art under Art. 54(3) and (4) EPC 1973 (see G 1/03). In the present case the relevant prior art was represented by documents D1 and D5. To be allowable the disclaimer had to fulfil the conditions in relation to both documents. As far as D1 was concerned, the disclaimer appeared to be appropriate. D5 represented the state of the art under Art. 54(2) EPC 1973. As D5 was not state of the art under Art. 54(3) and (4) EPC 1973 and was not an accidental disclosure, the disclaimer would only be allowable if it did not add subject-matter within the meaning of Art. 123(2) EPC 1973, i.e. if the disclaimer did not become relevant for the assessment of inventive step. Going into details, the board concluded that the subject-matter of claim 1 of the main and the first auxiliary requests was not acceptable under Art. 123(2) EPC 1973.

The following decisions deal with further aspects of the application of G 1/03:

T 1102/00 likewise considered the definition of a disclaimer. In its decision, the opposition division had held that the disclaimer correctly excluded the novelty-destroying matter disclosed in the prior art. The board observed that the opposition division had apparently not examined the question of whether the disclaimer had a basis in the application as filed, that question being decisive for the criteria to be applied in assessing its allowability. The board was not convinced that the passage in the application as filed cited by the appellant provided a basis for the disclaimer at issue. Even if it were acknowledged that the subject-matter defined by the expression "lignées cellulaires de mammifères" (as in the disclaimer) corresponded exactly to that defined by the expression "cultures de cellules de mammifères" (as in the application), it could not be inferred from the disclosure of the application as filed that the applicant intended to exclude such subject-matter from the scope of protection sought. Thus the board came to the conclusion that the disclaimer had no basis in the application as filed. It then applied the criteria established by G 1/03 to be applied in assessing the allowability of a disclaimer which was not disclosed in an application as filed.

In T 1559/05 the appellant/patentee suggested that since the basis of the amendment to claim 1 was disclosed in the application as filed, it was not an "undisclosed disclaimer" and therefore G 1/03 did not apply in the case at issue. In the respondent/opponent's view, the original application documents did not disclose at all that the disclaimer now introduced in claim 1 would not have been included in the invention as originally disclosed; on the contrary, the material now disclaimed was originally disclosed as being suitable for use in the invention; therefore this disclaimer did not have a basis in the original application documents. The board concurred with the appellant that, in the relevant passage of the application as filed, the new feature in claim 1 ("TPX® material") was disclosed as such. However, the pertinent question was whether a skilled person, reading the original application documents in their entirety, would unequivocally have understood that the TPX® material was actually disclaimed, i.e. that this material was excluded from the protection sought in the claims. The board concluded that although the appellant was correct in stating that there was a disclosure in the original patent application for the material TPX®, the application documents did not disclaim the use of this material, since the invention could be carried out successfully using this material. The new feature in claim 1 of the appellant's main request was therefore a disclaimer not previously disclosed in the application as filed. For such a disclaimer the ruling of G 1/03 applies. In the case at issue, the board came to the conclusion that the disclaimer in claim 1 was not allowable.

T 747/00 relates to the condition set by G 1/03 (point 2.2 of the Reasons) that 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. The board concluded that since, in the absence of a novelty-destroying disclosure, the disclaimer removed subject-matter without any need to do so, that disclaimer necessarily removed more than was necessary to restore novelty, which was not allowable (see also T 201/99). In T 1050/99 the board concluded that the disclaimer covered more than was disclosed in the prior art and thus removed from the claim more than was necessary to restore novelty. See also T 285/00 which concerned a disclaimer largely not based on the disclosure of a prior art document cited under Art. 54(3) EPC 1973, thereby rendering the remaining claimed subject-matter more distant from a relevant prior art document cited under Art. 54(2) EPC 1973.

In T 8/07 the board had to decide on the allowability of a disclaimer under Art. 123(2) EPC. The board observed that G 1/03 stated that a disclaimer may serve exclusively the purpose for which it is intended and nothing more. If a disclaimer has effects which go beyond its purpose, it is or becomes inadmissible. Further, the necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily (G 1/03, reasons 3). Therefore the disclaimer should not remove more than is necessary to restore novelty or to disclaim subject matter excluded from patentability for non-technical reasons. From that the board found that it could not be derived from the reasoning of G 1/03 that a patent proprietor is permitted a degree of discretion or latitude concerning the "border" within which the disclaimer should be drafted with respect to the subject matter to be excised. On the contrary, the existence of any discretion regarding the extent of the disclaimer as compared to the subject-matter to be excluded would inevitably introduce a degree of arbitrariness in the drafting of the disclaimer. This would conflict with the express findings of G 1/03. It was therefore concluded that in order to comply with the requirements following from G 1/03 with respect to the drafting of disclaimers it was necessary that these be formulated to excise only that subject-matter which could not be claimed. Further the submission of the patent proprietor that it would derive no advantage was not necessarily and inevitably correct since a broad disclaimer, in addition to restoring novelty would have the further effect of "immunising" the subject matter claimed against a potential attack of lack of novelty.

In case T 440/04 , the question was whether disclaiming example 1 of C63 was sufficient to restore novelty. Whereas on the one hand a disclaimer should not remove more than was necessary to restore novelty, it cannot, on the other hand, be considered to serve its intended purpose when it excises less than what is necessary to restore novelty. The disclosure in C63 of fibres having compositions and properties as required by the present claims 1 according to all requests was not strictly limited to the fibres described in example 1 of C63. "Cutting out" the latter fibres was thus not sufficient to exclude from the said claims 1 all those fibres disclosed in C63 having a composition and the inherent properties according to said claims. In the present case, the disclaiming of example 1 was thus not sufficient to restore novelty of the claimed subject-matter over C63.

In T 1107/06 the board observed that prior to the decisions G 1/03 and G 2/03 of the Enlarged Board of Appeal (OJ 2004, 413 and 448), it was widely accepted that a disclaimer could in principle be allowed when the subject-matter to be excluded was disclosed in the European patent application as filed as an embodiment of the invention. This principle emerged from the very first decision (T 4/80, OJ 1982, 149) allowing the introduction of a disclaimer into a claim. This decision justified the allowability of the disclaimer not by its purpose, but by the fact that the subject-matter to be excluded was originally disclosed by the applicant as a possible embodiment of the invention. The principles developed in decision T 4/80 were applied or cited with approval in several other decisions (see e.g. T 80/85; T 98/94; T 673/94). However, a more restrictive approach recently emerged in the case law of the boards of appeal (see T 1050/99; T 1102/00; T 236/01; T 868/04; T 795/05; T 1559/05) according to which disclaimers which exclude subject-matter disclosed as an embodiment of the invention were regarded as non-disclosed disclaimers and held unallowable unless they fall under one of the exceptions laid down in decisions G 1/03 and G 2/03.