b) Drafting of disclaimers – disclaimer to remove no more than necessary 

Regarding the drafting of undisclosed disclaimers, the Enlarged Board stated in G 1/03 and G 2/03 (OJ 2004, 413 and 448) and confirmed in G 1/16 (OJ 2018, A70) that the disclaimer should not remove more than was necessary to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons. The need for a disclaimer was not an opportunity for the applicant to reshape his claims arbitrarily.

As to the relationship between the requirement that "the disclaimer should not remove more than is necessary to restore novelty" and the requirement of clarity and conciseness, see also T 2130/11 (summarised in chapter II.E.1.7.3e) "Drafting of disclaimers – clarity" below).

(i) Disclosure of the interfering document not novelty destroying

In T 747/00 the board concluded that since, in the absence of a novelty-destroying disclosure in document (5), the disclaimer removed subject-matter without any need to do so, that disclaimer necessarily removed more than was necessary to restore novelty, which was not allowable (see also T 201/99).

The board in T 1224/14 found that a disclaimer was no longer needed to restore novelty over the prior-art example 5A of D1 because the example had become irrelevant for novelty purposes following a limitation of the claimed subject-matter. The disclaimer thus removed more than was necessary to restore novelty and was therefore at odds with the decision in G 1/03.

(ii) Uncertainty about anticipation by prior art document

In T 1532/16 the disclaimer at issue was held unallowable by the opposition division on the grounds that it could not be concluded with certainty that D5 actually disclosed the subject-matter as defined by the positive features of the claim. The board agreed that the disclaimed examples of D5 could not be seen as providing an unambiguous disclosure of compositions within the terms of the positive features of operative claim 1. However, this did not necessarily mean that the requirements of Art. 123(2) EPC were not met. As the wording of the examples was carefully repeated, nothing more than what these examples disclosed was potentially removed from the claims; but to the extent that the examples were not novelty destroying, indeed nothing was in fact removed.

(iii) Disclaimer covered more than what was disclosed in the prior art

In T 1050/99 the board concluded that the disclaimer covered more than was disclosed in the prior art and thus removed from the claim more than was necessary to restore novelty. See also T 285/00 which concerned a disclaimer largely not based on the disclosure of a prior art document cited under Art. 54(3) EPC 1973, thereby rendering the remaining claimed subject-matter more distant from a relevant prior art document cited under Art. 54(2) EPC 1973.

In T 10/01 the scope of the disclaimer was broader than was necessary to restore novelty. The board nevertheless referred to point 3 of the Reasons for G 1/03, saying that it could also be inferred from that decision that a disclaimer that was broader than strictly necessary to restore novelty might be allowed, depending on the circumstances of the case, if that proved necessary to prevent any lack of clarity in the claim that might otherwise result. However, in the case at issue there was no apparent justification for the disclaimer being broader than the disclosure in document (1).

In T 8/07, however, the board observed that G 1/03 had stated that a disclaimer may serve exclusively the purpose for which it is intended. Further, the necessity for a disclaimer was not an opportunity for the applicant to reshape his claims arbitrarily (G 1/03, point 3 of the Reasons). Therefore, the disclaimer should not remove more than was necessary to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons. From that the board found that it could not be derived from the reasoning of G 1/03 that a patent proprietor was permitted a degree of discretion or latitude concerning the "border" within which the disclaimer should be drafted with respect to the subject-matter to be excised. On the contrary, the existence of any discretion regarding the extent of the disclaimer as compared to the subject-matter to be excluded would inevitably introduce a degree of arbitrariness in the drafting of the disclaimer. This would conflict with the express findings of G 1/03. See also T 2277/18 (with reference to T 8/07 and T 795/05).

In T 477/09 claim 1 was modified by addition of an undisclosed disclaimer with a view to restoring its novelty over document D1. The board observed that two conditions relating to the wording of disclaimers had been established in points 2.2 (disclaimer should not remove more than is necessary) and 2.4 (clarity and conciseness) of the Order made in G 1/03 and that those two conditions were equally applicable. In the case at hand, the board found that the scope of the disclaimer was greater than the actually novelty-destroying disclosure in D1.

In T 2130/11 the board dealt again with these two conditions and held that the condition that the disclaimer should not remove more than is necessary to restore novelty (G 1/03) 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). A disclaimer removing more than was strictly necessary to restore novelty would not contradict the spirit of G 1/03, if it were required to satisfy Art. 84 EPC and it did not lead to an arbitrary reshaping of the claims (for more details see chapter II.E.1.7.3e) below).

(iv) Reference to a comparative example in prior art

In T 1843/09 (OJ 2013, 508) the opponent argued that the disclaimer contravened Art. 123(2) EPC because the wording of the disclaimer that the claimed film "is other than a film of comparative example 4 of EP-A 0546184" did not represent a technical feature. The board did not accept this argument. Although it was true that technical information could not directly be extracted from the wording of the disclaimer as such, it should be noted that the disclaimer did not merely cite a published patent document, but clearly referred to a specific disclosure in D15, namely a single film described in comparative example 4. Table 4 of D15 characterised this film unambiguously by a number of technical features. The skilled person was therefore able to determine simply by reading the comparative example in D15 which technical embodiment should be excluded from the scope of the claim.

(v) Disclaimed subject-matter not comprised by the claim

In T 1836/10 the examination division had based its refusal of the application on Art. 53(a) in conjunction with R. 28(c) EPC. The applicant attempted to disclaim the relevant subject-matter. The board considered that an applicant could not amend its claims at will, and that any disclaimer needed should not exclude any more than was necessary to disclaim subject-matter excluded from patentability for non-technical reasons. The same applied to a disclaimer which served to disclaim subject-matter that was not comprised by the claim in the first place (since the subsequent use of the stem cells had not been claimed as a method step).

(vi) Undisclosed disclaimer and partial priority

In order to determine whether D2 was prior art under Art. 54(2) or (3) EPC for the claimed subject-matter in T 518/22, the board assessed whether the subject-matter of claim 1 was entitled to claim priority from P and whether D2 was entitled to claim priority from P1. The board found that D2's priority based on P1 was valid (see summary of T 518/22 in chapter II.D.2.4.3). As regards the validity of the patent's priority claim based on P, the board established that the relevant date for the subject-matter of claim 1 in several embodiments concerning SEQ ID NOs: 5 to 8 was the filing date of the patent application, whereas several embodiments of claim 1 in relation to SEQ ID NO: 4 were entitled to claim partial priority from P (G 1/15). Therefore, D2 was prior art under Art. 54(2) EPC for the subject-matter of claim 1 not enjoying priority, i.e. in relation to several embodiments concerning SEQ ID NOs: 5 to 8, and prior art under Art. 54(3) EPC for the subject-matter of claim 1 enjoying priority, i.e. in relation to several embodiments concerning SEQ ID NO: 4. Since the undisclosed disclaimer added to claim 1 in auxiliary request 2 removed embodiments of D2 which belonged to the state of the art pursuant to Art. 54(2) EPC and were not an accidental disclosure, such amendment was not allowable under Art. 123(2) EPC. Auxiliary request 2 comprised added subject-matter (G 1/03 and G 1/16) and did not fulfil the requirements of Art. 123(2) EPC.

(vii) Disclaiming subject-matter excluded from patentability for non-technical reasons

In T 220/22 the respondent submitted that the term "ex vivo" in claims 8, 14, 16 and 17 of the main request was a disclaimer which excluded methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body under Art. 53(c) EPC. The board agreed that it is allowable to disclaim subject-matter which is excluded from patentability for non-technical reasons under Art. 52 to 57 EPC in accordance with the principles established for an undisclosed "disclaimer" in G 1/03 and G 2/03, confirmed in G 1/16. However, the board explained that G 1/03 and G 2/03 also stipulate that an undisclosed disclaimer should not remove more than is necessary. In agreement with the appellant the board considered that the amended claims excluded more than was necessary, contrary to G 1/03, as they disclaimed methods performed directly on whole living plants, which were not excluded under Art. 53(c) EPC, thus contravening Art. 123(2) EPC.