The subject-matter to be excluded is not disclosed in the application as originally filed (so-called undisclosed disclaimers)
Limiting the scope of a claim by using a "disclaimer" to exclude a technical feature not disclosed in the application as filed may be allowable under Art. 123(2) in the following cases (see G 1/03 and G 2/03, and F-IV, 4.20):
restoring novelty over a disclosure under Art. 54(3);
restoring novelty over an accidental anticipation
under Art. 54(2)
. "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". The status of "accidental" should be ascertained without looking at the available further state of the art. A related document does not become an accidental anticipation merely because there are other disclosures even more closely related. The fact that a document is not considered to be the closest prior art is insufficient for achieving the status of "accidental". An accidental disclosure has nothing to do with the teaching of the claimed invention, since it is not relevant for examining inventive step. For example, this is the case when the same compounds serve as starting materials in entirely different reactions yielding different end products (see T 298/01
). A prior art, the teaching of which leads away from the invention, however, does not constitute an accidental anticipation; the fact that the novelty destroying disclosure is a comparative example is also insufficient for achieving the status of "accidental" (see T 14/01
and T 1146/01
removing subject-matter which, under Art. 52
to Art. 57
, is excluded from patentability for non-technical reasons
. For example, the insertion of "non-human" in order to satisfy the requirements of Art. 53(a)
However, the introduction of the undisclosed disclaimer should not lead, for example, to the singling out of compounds or sub-classes of compounds or other so-called intermediate generalisations not specifically mentioned or implicitly disclosed in the application as filed (see G 2/10). More generally, the test applicable under Art. 123(2), as defined by G 2/10 (see H-V, 4.2), also applies to so-called undisclosed disclaimers (see T 1176/09).
An undisclosed disclaimer is not allowable if:
it is made in order to exclude non-working embodiments or remedy insufficient disclosure;
it makes a technical contribution.
An undisclosed disclaimer is, in particular, not allowable in the following situations:
the limitation is relevant for assessing inventive step;
the disclaimer, which would otherwise be allowable on the basis of a conflicting application alone (Art. 54(3)
), renders the invention novel or inventive over a separate prior art document under Art. 54(2)
, which is a not accidental
anticipation of the claimed invention;
the disclaimer based on a conflicting application removes also a deficiency under Art. 83
A disclaimer should remove no more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons. A claim containing a disclaimer must meet the clarity and conciseness requirements of Art. 84. In the interest of the patent's transparency, the excluded prior art should be indicated in the description in accordance with Rule 42(1)(b) and the relation between the prior art and the disclaimer should be shown.