European Patent Office

T 0507/99 (Disclaimers/PPG) du 20.12.2002

Identifiant européen de la jurisprudence
ECLI:EP:BA:2002:T050799.20021220
Date de la décision
20 décembre 2002
Numéro de l'affaire
T 0507/99
Requête en révision de
-
Numéro de la demande
92116446.3
Classe de la CIB
C03C 17/36
Langue de la procédure
Anglais
Distribution
Publiées au Journal officiel de l'OEB (A)
Téléchargement
Décision en anglais
Résumés pour cette décision
-
Titre de la demande
Heat processable metallic appearing coatings
Nom du demandeur
PPG Industries Ohio, Inc.
Nom de l'opposant
SAINT-GOBAIN GLASS FRANCE
Chambre
3.3.05
Sommaire

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?

Mots-clés
Allowability of disclaimers - under Article 123(2) - delimitation against Article 54(2) and (3) prior art - criteria to be applied - referral to Enlarged Board
Exergue
-

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?