T 0507/99 (Disclaimers/PPG) of 20.12.2002
- European Case Law Identifier
- ECLI:EP:BA:2002:T050799.20021220
- Date of decision
- 20 December 2002
- Case number
- T 0507/99
- Petition for review of
- -
- Application number
- 92116446.3
- IPC class
- C03C 17/36
- Language of proceedings
- English
- Distribution
- Published in the EPO's Official Journal (A)
- Download
- Decision in English
- Other decisions for this case
- T 0507/99 Coatings/PPG 2002-08-28T 0507/99 Coatings II/PPG 2006-09-28
- Abstracts for this decision
- -
- Application title
- Heat processable metallic appearing coatings
- Applicant name
- PPG Industries Ohio, Inc.
- Opponent name
- SAINT-GOBAIN GLASS FRANCE
- Board
- 3.3.05
- Headnote
The following questions are referred to the Enlarged Board of Appeal:
1. Is an amendment to a claim by the introduction of a disclaimer unallowable under Article 123(2) EPC 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. If the answer to question 1 is no, which criteria are to be applied in order to determine whether or not a disclaimer is allowable?
(a) In particular, is it of relevance whether the claim is to be delimited against a state of the art according to Article 54(3) EPC or against a state of the art according to Article 54(2) EPC?
(b) Is it necessary that the subject-matter excluded by the disclaimer be strictly confined to that disclosed in a particular piece of prior art?
(c) Is it of relevance whether the disclaimer is needed to make the claimed subject-matter novel over the prior art?
(d) Is the criterion applicable that the disclosure must be accidental, as established by prior jurisprudence, and, if yes, when is a disclosure to be regarded as being accidental, or
(e) is the approach to be applied that a disclaimer which is confined to disclaiming the prior art and has not been disclosed in the application as filed is allowable under Article 123(2) EPC, but that the examination of the subject-matter claimed for the presence of an inventive step has then to be carried out as if the disclaimer did not exist?
- Relevant legal provisions
- European Patent Convention Art 112(1)(a) 1973European Patent Convention Art 123(2) 1973European Patent Convention Art 52(1) 1973European Patent Convention Art 54(2) 1973European Patent Convention Art 54(3) 1973European Patent Convention Art 54(4) 1973European Patent Convention Art 56 1973
- Keywords
- Allowability of disclaimers - under Article 123(2) - delimitation against Article 54(2) and (3) prior art - criteria to be applied - referral to Enlarged Board
- Catchword
- -
ORDER
For these reasons it is decided that:
The following questions are referred to the Enlarged Board of Appeal:
1. Is an amendment to a claim by the introduction of a disclaimer unallowable under Article 123(2) EPC 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. If the answer to question 1 is no, which criteria are to be applied in order to determine whether or not a disclaimer is allowable?
(a) In particular, is it of relevance whether the claim is to be delimited against a state of the art according to Article 54(3) EPC or against a state of the art according to Article 54(2) EPC?
(b) Is it necessary that the subject-matter excluded by the disclaimer be strictly confined to that disclosed in a particular piece of prior art?
(c) Is it of relevance whether the disclaimer is needed to make the claimed subject-matter novel over the prior art?
(d) Is the criterion applicable that the disclosure must be accidental, as established by prior jurisprudence, and, if yes, when is a disclosure to be regarded as being accidental, or
(e) is the approach to be applied that a disclaimer which is confined to disclaiming the prior art and has not been disclosed in the application as filed is allowable under Article 123(2) EPC, but that the examination of the subject-matter claimed for the presence of an inventive step has then to be carried out as if the disclaimer did not exist?