Résumé de EPC2000 Art 123(2) pour la décision T0088/21 du 15.11.2022

In T 88/21 the board held that the basis for the assessment of the allowability of an undisclosed disclaimer was the claim before the insertion of the disclaimer. The current application and D1 were both filed by the appellant. The current application claimed priority from D0. D1 claimed priority from unpublished D1a, which was filed prior to D0. It had not been contested that D0 and D1a belonged to the appellant. The board explained that the subject-matter of claim 1 of the current application before the addition of the undisclosed disclaimer was anticipated by examples 4A-D and 5A of D1. The effective date of these examples in D1 was the filing date of D1a, which was earlier than the filing date of D0. Hence, as far as the subject-matter of examples 4A-D and 5A of D1/D1a was concerned, D1a - and not D0 - was the first application within the meaning of Art. 87(1) together with (4) EPC. Therefore, the current application could not validly claim the priority of D0 for the subject-matter of these examples. Since D1 was published prior to the filing date of the current application, D1 was prior art under Art. 54(2) EPC for this subject-matter. D1 was not an accidental disclosure because it was directed to the same technical field as the current application. Furthermore, exclusion from patentability for non-technical reasons was irrelevant to this case. Consequently, the criteria developed in G 1/03 together with G 1/16 were not fulfilled and the undisclosed disclaimer introduced in claim 1 of the main request contravened Art. 123(2) EPC. The board could not endorse the argument put forward by the appellant that, in essence, D1 was prior art under Art. 54(3) EPC, and not under Art. 54(2) EPC. The applicant argued that the claim currently on file, i.e. the claim with the disclaimer, had to be considered; not the notional claim without the disclaimer. As none of the subject-matter remaining in current claim 1 was disclosed in D1/D1a, the applicant understood that D0 was the first application within the meaning of Art. 87(1) EPC. Hence, the applicant derived that the priority of the main request based on D0 was valid and the disclaimer was allowable to restore novelty over D1 as an Art. 54(3) EPC document. The board explained that the argument presented by the applicant was based on the incorrect assumption that the claim with (i.e. after the inclusion of) the disclaimer was decisive. In G 1/03, the insertion of the undisclosed disclaimer was occasioned by a lack of novelty objection pursuant to Art. 54(3) EPC, meaning that the objection concerned the claim without (i.e. before the insertion of) the disclaimer. By contrast, under the appellant's approach, the insertion of the disclaimer would restore novelty when a novelty objection under Art. 54(2) EPC (still) applied. The disclaimer would have the effect of removing the subject-matter from the claim which was objectionable under Art. 54(2) EPC. The board found support in T 1222/11. Although T 1222/11 was explicitly rejected by T 1872/14, as cited by the appellant, subsequent case law was in line with T 1222/11. G 1/16 (in particular, Reasons 43 ff) confirmed that only the criteria of G 1/03 were to be considered when the allowability of an undisclosed disclaimer was assessed, while the gold standard test of G 2/10 had no relevance under these circumstances. G 1/16 explicitly cited T 1872/14 as thus incorrectly applying the gold standard test (in a modified form) to undisclosed disclaimers (see Reasons 24(2)(a) and (b)). G 1/15 moreover confirmed the conceptual identification of alternative subject-matter when assessing partial priorities and endorsed the approach of T 1222/11 in determining the relevant disclosure of a priority document vis-à-vis a subsequent application. Furthermore, in T 282/12, the board held that, for reasons of consistency, the rationale of G 1/15 must also apply for deciding whether an application from which priority was claimed was the first application within the meaning of Art. 87(1) EPC. Finally, the board addressed the argument by the appellant that following T 1222/11 would amount to an unfair disadvantage for applicants because of "self-collision", as under the same circumstances a third party would be allowed to insert a disclaimer. The board recalled that G 2/98 advocated a "narrow or strict interpretation" of the concept of the same invention and the right to priority. Moreover, the appellant had known the content of their documents D1a/D1 at the time of filing the current application, and it had been in their hands to avoid the current situation.