The Enlarged Board in G 2/10 (OJ 2012, 376) found that subsequent to decision G 1/03 (and G 2/03) (OJ 2004, 413, 448), different opinions have been expressed in the jurisprudence of the boards of appeal on whether decision G 1/03 relates to the disclaiming of embodiments which are disclosed as part of the invention in the application as filed or whether in that situation the jurisprudence as previously established following decision T 4/80 (OJ 1982, 149) continues to apply (see G 1/07, point 4.2.3 of the Reasons). In G 2/10 (OJ 2012, 376) the Enlarged Board reformulated the question referred to it, stating that the question was construed as intending to ask whether an amendment to a claim by the introduction of a disclaimer infringes Art. 123(2) EPC if the subject-matter of the disclaimer was disclosed as an embodiment of the invention in the application as filed. Thereafter, the Enlarged Board defined the terms disclaimer (point 2.2 of the Reasons, citing G 1/03, point 2 of the Reasons) and embodiment (point 2.3 of the Reasons). The Enlarged Board stated that it appears immediately evident that the nature of the question differs according to whether only one specific embodiment is disclaimed from a generally drafted claim, or whether, on the other hand, a whole subgroup or area is disclaimed.
The Enlarged Board in G 2/10 stressed that decision G 1/03 does not support the conclusion drawn by T 1050/99 that G 1/03 also relates to disclaimers for disclosed subject-matter. Further, in G 1/03 it was not decided that an undisclosed disclaimer would be always allowable under Art. 123(2) EPC. The gist of the questions referred to the Enlarged Board in case G 1/03, on which the Enlarged Board had to give an answer, was to establish whether and, if so, under which circumstances, undisclosed disclaimers could be considered allowable at all, as a matter of principle, despite the absence of a basis in the application as filed. It was this question and no more that the Enlarged Board had to answer. The wording of its answer, reading "a disclaimer may be allowable", indicated that with the criteria established in this answer the Enlarged Board in G 1/03 did indeed not intend to give a complete definition of when a disclaimer violates Art. 123(2) EPC.
The Enlarged Board stated that neither decision G 1/93 nor decision G 1/03 intended to modify the general definition of the requirements of Art. 123(2) EPC established in opinion G 3/89 (OJ 1993,117) and decision G 11/91 (OJ 1993, 125), which definition has become the generally accepted or "gold" standard for assessing any amendment for its compliance with Art. 123(2) EPC. As to the criteria to be applied, the principle that any amendment to an application or a patent, and in particular to a claim, must fulfil the requirements of Art. 123(2) EPC also applies to an amendment limiting the claim by disclaiming disclosed subject-matter. Therefore, as is the case for any other amendment, the test for an amendment to a claim by disclaiming subject-matter disclosed as part of the invention in the application as filed must be that after the amendment the skilled person may not be presented with new technical information. Hence, disclaiming subject-matter disclosed in the application as filed can also infringe Art. 123(2) EPC if it results in the skilled person being presented with technical information which he would not derive directly and unambiguously, using common general knowledge, from the application as filed.
The point of reference for assessing an amended claim for its compatibility with Art. 123(2) EPC is the subject-matter which the claim contains after the amendment. In other words, it is the subject-matter remaining in the claim after the amendment. The test to be applied is whether the skilled person would, using common general knowledge, regard the remaining claimed subject-matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed. This test is the same as that applied when the allowability of a limitation of a claim by a positively defined feature is to be determined. The Enlarged Board found that no convincing reason had been advanced for not applying the principles developed in the context of Art. 123(2) EPC for the assessment of amendments to claims by the introduction of positive limiting features in the same manner to limitations of claims by disclaimers which disclaim subject-matter disclosed in the application as filed. The Enlarged Board stressed in its decision the importance of applying a uniform concept of disclosure (with reference to Art. 54, 87 and 123 EPC; see G 2/10, point 4.6 of the Reasons, citing G 1/03, OJ 2012, 436, point 2.2.2 of the Reasons).
On 8 April 2004, the Enlarged Board of Appeal ruled on referrals G 1/03 and G 2/03 (OJ 2004, 413 and 448). For a full account, 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 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
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.
la. An amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed infringes Art. 123(2) EPC if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.
lb. Determining 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.
As stated in T 1049/08, it is permissible to restrict the subject-matter using a negative limitation, i.e. a disclaimer, if - as in the case at issue - adding positive features to the claim either would not define more clearly and concisely the subject-matter still protectable or would unduly limit the scope of the claim. Decision G 1/03 referred to "undisclosed disclaimers", i.e. to disclaimers which do not have any basis in the application as filed. It was correct that such disclaimers are only allowable if they meet the conditions set out in G 1/03. Since the limitation introduced was derived literally from the original application it had a basis in it and did not represent an undisclosed disclaimer but a disclaimer of disclosed subject-matter. Hence, in the board’s view, G 1/03 was not relevant to the present case. Moreover, G 2/10 pointed out that G 1/03 referred exclusively to undisclosed disclaimers (see G 2/10, point 3, in particular point 3.9 of the Reasons). The board applied G 2/10.
The case T 1870/08 related to an undisclosed disclaimer. Decision G 2/10 was therefore, prima facie, not concerned with the same situation, so it was questioned by the board whether that decision was applicable at all to the present case. It concluded, after its detailed reasoning, that the test of G 2/10 (see G 2/10, part 1a of the Order, points 4.5.1 and 4.5.2 of the Reasons) also applies to an amendment involving an undisclosed disclaimer by means of which a claim has been rendered new over a European patent application according to Art. 54(3) EPC. The examination of the admissibility of the amendment for compliance with Art. 123(2) EPC must be made separately for the disclaimer per se and for the subject-matter remaining in the claim (see point 4. of the Reasons).
In decision G 2/10 the Enlarged Board of Appeal did not consider that decision G 1/03 was exhaustive as to the conditions that needed to be fulfilled for an amendment consisting of the introduction of an undisclosed disclaimer to be regarded as allowable under Art. 123(2) EPC. The board in T 2464/10 interpreted these remarks as an instruction to apply the further test developed in this decision, in addition to those set out in G 1/03, in order to carry out a full assessment of whether an undisclosed disclaimer meets the requirements of Art. 123(2) EPC. The further test to be applied is whether the skilled person would, using common knowledge, regard the remaining claimed subject-matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed (see also T 748/09).
In the very recent decision T 1676/08 - a decision which deals with many substantive and procedural matters - the board considered that, according to the EPC, there was no difference in quality between structural and functional features. Thus, the principles developed in decision G 2/10 were also to be applied in the assessment of added subject-matter in claims comprising structural and functional features (point 10.5 of the Reasons).
Furthermore, with regard to very latefiled requests only admissible at the discretion of the board (Art. 13(1) RPBA and Art. 13(3) RPBA), in T 1839/11 the board, in the exercise of its discretion, decided not to admit these requests for, among others, the following reason: there might well have been a basis for the disclaimer in the application as filed. Nevertheless the amendment was not straightforward and raised possible issues about the interplay of the two decisions of the Enlarged Board in G 2/10 and G 1/03. The fact that other boards of appeal might have allowed similar amendments, for example in T 1049/08 and T 2464/10, was not conclusive. It was simply not appropriate for a board to be bounced into being required to make an immediate decision on what might be a difficult point.
In the third paragraph of point 3 of the Reasons of G 1/03, it is emphasised that the requirements of Art. 84 EPC are also applicable to claims containing disclaimers (mentioned in e.g. T 1695/07). As to the application of Art. 84 EPC in relation to the drafting of disclaimers, see below.
With regard to the admissibility of disclaimers, reference should also be made to Chapter II.D.2.1.2 "Priority - Amendments and disclaimers".
In G 1/03 (and G 2/03), and then G 2/10, the Enlarged Board, having regard to the law established by it in relation to disclaimers, expressly identified those board decisions which should no longer be applied. Thus, in G 1/03, point 2.5.3 of the Reasons, it stated that the isolated decisions T 170/87 and T 313/86 were not to be followed, whilst also criticising T 323/97 in the light of the new law applicable. In G 2/10 (OJ 2012, 376), it criticised the approach to applying its case law taken in T 1050/99 (G 2/10, point 3.5 of the Reasons, OJ 2012, 396), T 1102/00 (G 2/10, point 4.5.5 of the Reasons, OJ 2012, 411).
Decisions issued prior to these Enlarged Board decisions and reported in the previous edition of this case law report have anyway been deleted from this edition.