h) Negative feature implicitly disclosed in original application – G 1/03 not applicable 

In T 1525/15 the appellant's objection related to a negative feature (or disclaimer) of both independent claims ("free of a micro-embossing design"). The board observed that there was no verbatim disclosure of this feature in the original application. The feature was added during the grant proceedings to establish novelty over document D1, which was state of the art according to Art. 54(3) EPC. The board emphasised that such an amendment was allowable: (i) if the negative feature was implicitly disclosed as such in the original application; or (ii) if the disclaimer was undisclosed in the original application but complied with the requirements formulated in decision G 1/03 (OJ 2004, 413) of the Enlarged Board. In the case in hand the board came to the conclusion that the negative feature was implicitly but nevertheless directly and unambiguously disclosed in the original application. As the negative feature was disclosed as such in the original application, it was not necessary to examine whether the conditions set out in decision G 1/03 (and confirmed in G 1/16, OJ 2018, A70) were fulfilled.

In T 273/22, the board's view on disclaimers was that there existed a fundamental difference between (i) an implicit disclosure in an (earlier) application as filed of the absence of certain features derivable from the comparison of the invention with the prior art and (ii) a claim wording that specified the mandatory absence of certain features as an explicit negative technical feature from the specific subject-matter defined in the claim under consideration (i.e. a disclaimer in a claim). In the case in hand, in view of the uncertainties caused by the absence of any explicit disclosure of the (alleged) preferable absence of fully human antibodies, the board considered that the disclaimer concerned was in fact an undisclosed disclaimer. The findings of G 1/03, G 2/03 and G 1/16 thus applied. The fact that the disclaimer did not fall into any of the categories established in these decisions meant that, for this reason alone, it was not allowable.