T 2130/11 of 02.12.2014
- European Case Law Identifier
- ECLI:EP:BA:2014:T213011.20141202
- Date of decision
- 2 December 2014
- Case number
- T 2130/11
- Petition for review of
- -
- Application number
- 04254247.2
- Language of proceedings
- English
- Distribution
- Distributed to board chairmen and members (B)
- Download
- Decision in English
- OJ versions
- No OJ links found
- Other decisions for this case
- -
- Abstracts for this decision
- -
- Application title
- Methods of providing two-part self-adhering dental compositions
- Applicant name
- Kerr Corporation
- Opponent name
- 3M Innovative Properties Company
3M Deutschland GmbH - Board
- 3.3.07
- Headnote
- -
- Relevant legal provisions
- European Patent Convention Art 108European Patent Convention Art 111(1)European Patent Convention Art 123(2)European Patent Convention Art 123(3)European Patent Convention Art 84European Patent Convention R 99(2)Rules of procedure of the Boards of Appeal Art 13
- Keywords
- Admissibility of appeal - appeal sufficiently substantiated (yes)
Claims - clarity of disclaimer (no)
Amendments - disclosed disclaimer
Amendments - extension beyond the content of the application as filed (yes)
Late-filed auxiliary requests - admitted (yes)
Amendments - extension beyond the content of the application as filed (no)
Appeal decision - remittal to the department of first instance (yes) - Catchword
- The difficulty for the applicant or patent proprietor in formulating an allowable disclaimer cannot justify an exception in the application of Article 84 EPC which is not foreseen in the Convention. Not even a condition on the allowability of a disclaimer made explicit in a decision of the Enlarged Board as the condition that a "disclaimer should not remove more than is necessary to restore novelty" (G 1/03, point 3 in the reasons, second paragraph, last sentence) may have as a consequence the watering down of one of the requirements of the EPC. The requirements of Article 84 EPC must therefore apply for a disclaimer as for any other feature of a patent claim (see point 2.9).
On the other side, the condition that the disclaimer should not remove more than is necessary to restore novelty should be applied while taking into consideration its purpose, namely that the "necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily" (G 1/03, point 3 in the reasons, second paragraph, last but one sentence). In this respect situations can be foreseen, in which, while fulfilment of the condition taken in a strictly literal way would not be possible, a definition of the disclaimed subject-matter which satisfies the requirements of Article 84 EPC and fulfils the purpose of the condition (i.e. to avoid an arbitrary reshaping of the claims) may be achievable. In other words, a disclaimer removing more than strictly necessary to restore novelty would not be in contradiction with the spirit of G 1/03, if it were required to satisfy Article 84 EPC and it did not lead to an arbitrary reshaping of the claims (see point 2.10).
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance for further prosecution.