G 1/03, G 2/03 not applicable to disclosed disclaimers

As stated in T 1049/08, it is permissible to restrict the subject-matter using a negative limitation, i.e. a disclaimer, if - as in the case at issue - adding positive features to the claim either would not define more clearly and concisely the subject-matter still protectable or would unduly limit the scope of the claim. Decision G 1/03 referred to "undisclosed disclaimers", i.e. to disclaimers which do not have any basis in the application as filed. It was correct that such disclaimers are only allowable if they meet the conditions set out in G 1/03. Since the limitation introduced was derived literally from the original application it had a basis in it and did not represent an undisclosed disclaimer but a disclaimer of disclosed subject-matter. Hence, in the board’s view, G 1/03 was not relevant to the present case. Moreover, G 2/10 pointed out that G 1/03 referred exclusively to undisclosed disclaimers (see G 2/10, point 3, in particular point 3.9 of the Reasons). The board applied G 2/10.

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