f) Undisclosed disclaimer

In T 2277/18, the respondent (patent proprietor) requested that the patent be maintained as granted or, alternatively, in the version as amended by the opposition division. Compared with the version as granted, independent claim 1 contained a disclaimer that had not been disclosed in the version as originally filed. As per G 1/03 (OJ 2004, 413), a disclaimer should not remove more than is necessary to restore novelty. However, the board held that the disclaimer in the maintained version of the contested patent had removed more than was necessary. On the prohibition of reformatio in peius, the board stated that the requirements laid down in G 1/99 for an admissible exception to the prohibition of reformatio in peius also applied when the inadmissible amendment was an undisclosed disclaimer. The question in this case was whether, in line with the first option from G 1/99, adding originally disclosed features that limited the scope of the patent as maintained could overcome the established deficiency. The board found that it could, since the application as originally filed disclosed a particular implant made of a specific Mg-Zn-Ca alloy. Adding the features from this example would further limit the scope of the patent compared with the version as maintained while simultaneously making the excessively broad and so inadmissible disclaimer superfluous and thereby overcoming the deficiency it had created.