Zusammenfassung von EPC2000 Art 123(2) für die Entscheidung T2047/21 vom 11.04.2024

In T 2047/21 claim 1 of auxiliary request 1b defined a container by means of a disclaimer. It was disputed among the parties whether this was a "disclosed disclaimer" or an "undisclosed disclaimer". The board explained that G 1/16 provided definitions for the terms "undisclosed disclaimer" and "disclosed disclaimer". The term "undisclosed disclaimer" related to the situation in which neither the disclaimer itself nor the subject-matter excluded by it had been disclosed in the application as filed. The term "disclosed disclaimer" related to the situation in which the disclaimer itself might not have been disclosed in the application as filed but the subject-matter excluded by it had a basis in the application as filed. Thus, undisclosed disclaimers and disclosed disclaimers could be distinguished according to whether the subject-matter on which the respective disclaimer was based was explicitly or implicitly, directly and unambiguously, disclosed to the skilled person using common general knowledge, in the application as filed. In the case in hand, the disclaimed subject-matter was a container for containing tissue comprising features (a) to (c1). The board established that this was an "undisclosed disclaimer" because the skilled person using their general knowledge would not directly and unambiguously derive this type of container from the original application. To be allowable, an undisclosed disclaimer had to fulfil one of the criteria set out in point 2.1 of the order of decision G 1/03 (see the Headnote of G 1/16). An undisclosed 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 (an anticipation was accidental if it was 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 Art. 52 to 57 EPC, was excluded from patentability for non-technical reasons. During the opposition proceedings, the appellant justified the disclaimer by the objections raised against granted claim 1 in view of D2. However, D2 was neither state of the art under Art. 54(3) EPC nor an accidental anticipation under Art. 54(2) EPC. During the appeal proceedings, the appellant did not put forward any argument to show that any of the criteria set out in G 1/03 were fulfilled. The board thus concluded that claim 1 of auxiliary request 1b did not meet the requirements of Art. 123(2) EPC.