EPO Enlarged Board of Appeal clarifies standard for examining “undisclosed disclaimers”

Haar, 18 December 2017 - The Enlarged Board of Appeal today issued decision G 1/16 on the allowability of undisclosed disclaimers introduced into a patent claim. The decision concerns three questions of law referred to the Enlarged Board, which constitutes the highest level of judicial authority at the EPO.

Under the European Patent Convention (EPC), the patent claims define the subject-matter for which protection is sought in terms of the technical features of the claimed invention (Articles 69(1) and 84 EPC). These technical features define the elements and characteristics of the claimed subject-matter and, usually, are phrased as "positive" technical features. However, the claimed subject-matter may also be defined in terms of "negative" claim features which describe elements and characteristics that the claimed subject-matter does not have (i.e. disclaimers).

According to Article 112(1)(a) EPC, a board of appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the Enlarged Board of Appeal if it considers that a decision is required in order to ensure uniform application of the law or to clarify a point of law of fundamental importance.

The questions of law referred to the Enlarged Board in the present case sought clarification as to the proper standard to be applied when examining a claim amendment by the introduction of an undisclosed disclaimer for its allowability according to the requirements of Article 123(2) EPC. The term "undisclosed disclaimer" relates to the situation in which neither the disclaimer itself nor the subject-matter excluded by it has been disclosed in the application as filed.

The Enlarged Board answered the questions of law referred to it as follows:

For the purpose of considering whether a claim amended by the introduction of an undisclosed disclaimer is allowable under Article 123(2) EPC, the disclaimer must fulfil one of the criteria set out in point 2.1 of the order of decision G 1/03. 

The introduction of such a disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular, it may not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure. The disclaimer may not remove more than necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.

In the reasons for its decision, the Enlarged Board emphasised that this standard is neither intended nor to be interpreted as a departure from decision G 1/03 but that it is understood to be already encompassed by the requirements of G 1/03.

The standard defined in G 2/10 as the "gold standard" remains the relevant disclosure test for assessing the allowability of a claim amendment by the introduction of a disclosed disclaimer.

In the view of the Enlarged Board, the answers to the referred questions of law will not only enable the referring board to take a final decision in the appeal case before it, but will also serve as guidance for a uniform approach to assessing the allowability of a claim amendment by the introduction of an undisclosed disclaimer in other cases before the boards of appeal or before the examining and opposition divisions of the EPO.

The Enlarged Board was composed of seven members. Its Chairman also acts as President of the Boards of Appeal.

Further information

• Interlocutory decision of Technical Board of Appeal 3.3.09 in case T 437/14 referring three questions of law to the Enlarged Board of Appeal (OJ EPO 2017, A50)
• Decisions of the Enlarged Board of Appeal G 1/03 and G 2/03 dated 8 April 2004 concerning undisclosed disclaimers (OJ EPO 2004, 413, 448)
• Decision of the Enlarged Board of Appeal G 2/10 dated 30 August 2011 concerning disclosed disclaimers (OJ EPO 2012, 376)
• Communication from the Enlarged Board of Appeal concerning case G 1/16 (OJ EPO 2016, A96)  

Contact person at the Boards of Appeal

Ingo Beckedorf
Legally qualified member of the Enlarged Board of Appeal and Chairman of Technical Board of Appeal 3.2.07
Tel.: +49 (0)89 2399 3270
ibeckedorf@epo.org