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G02/10 – EPO expands possibility to use undisclosed disclaimers


6th Dec 2011

On 30th August 2011 the Enlarged Board of Appeal of the European Patent Office (EPO) issued a decision in case G02/10, concerning the allowability of so-called “undisclosed disclaimers”. These are limitations to the claims that are made to exclude features from the scope of protection, but that have no basis in the application as filed.

Summary

The Enlarged Board of Appeal (“the Board”) addressed the question of whether it is allowable to amend a claim by disclaiming subject-matter, where that subject matter was originally disclosed as an embodiment of the invention. Overruling the position recently adopted by the EPO, the Board stated that such disclaimers do not per se add matter.

However, the Board did not conclude that undisclosed disclaimers of disclosed subject matter are always allowable. Instead, allowability must be decided on a case-by-case basis, using the “disclosure test” – the test that is used to assess the allowability of any other amendment. The key question in every case is whether the disclaimer results in the skilled person being presented with new technical information not disclosed in the application as filed.

The Board did give some guidance on how to apply the “disclosure test” to undisclosed disclaimers of disclosed subject matter. However, the guidance is not entirely clear, and will therefore be open to interpretation by the Technical Boards of Appeal and the Examining Division. Thus, some uncertainty surrounds the exact circumstances where undisclosed disclaimers of disclosed subject matter will be allowed.

Disclaimers have traditionally been associated most closely with the life sciences field. However, following this decision the use of disclaimers may become more relevant in other technical fields.

Background & Reasons For Referral In G02/10

Under normal EPO practice, amendments made to a patent specification must not extend the subject matter of the application beyond the content of the application as filed. In other words, amendments must be supported by the application as filed.

However, under certain circumstances, it is possible to introduce a disclaimer which does not find support in the application as filed. The circumstances are set out in Enlarged Board of Appeal decision G01/03. In brief, an undisclosed disclaimer is allowable: (i) to restore novelty over prior art which was filed before the application in question, but published after (“novelty-only prior art”); (ii) to distinguish over prior art that is in an unrelated technical field (“accidental anticipation”); and (iii) to exclude non-patentable subject matter, for example in the case of a method of cosmetic treatment to exclude embodiments falling within the method of medical treatment exclusion.

But what if a prior art document discloses one embodiment of an invention, but where the prior art does not fall into one of categories (i) or (ii) above? Or what if an applicant hoped to avoid overlap between a broader divisional application and a narrow granted parent to circumvent double patenting issues? One way to address such situations would be to disclaim the problematic embodiment of the invention. However, in view of decision G01/03 it was unclear whether such an undisclosed disclaimer would be allowable.

Prior to decision G01/03, the EPO allowed disclaimers of subject matter that was originally disclosed as an embodiment of the invention. However, following decision G01/03, the EPO Technical Boards of Appeal began to refuse disclaimers of this kind on the basis that they were undisclosed, because the subject matter was not identified as being excluded in the application as filed, and because such a disclaimer did not fall into any of the allowable situations identified in G01/03. The divergence between the old and present practices brought about the referral to the Board in G02/10.

The Decision (G02/10)

On account of the specific wording of the referred questions and answers in the earlier decision G01/03, the Board decided in G02/10 that the earlier decision did not address the situation where a disclaimer as such was not disclosed in the application as filed, but where the subject matter of the disclaimer was disclosed in the application as filed (Reasons for the Decision Point 3). This allowed the Board to reopen the debate over whether such a disclaimer was allowable.

As discussed above, G02/10 requires the allowability of an undisclosed disclaimer of disclosed subject matter to be assessed on a case-by-case basis using the disclosure test – the same test used to assess whether any other amendment adds matter: “the test for an amendment to a claim by disclaiming subject-matter disclosed as part of the invention in the application as filed must be that after the amendment the skilled person may not be presented with new technical information” (Reasons, 4.5.1). Thus, disclaiming subject matter disclosed in the application as filed is not allowable if it results in the skilled person being presented with technical information which he would not derive directly and unambiguously, using common general knowledge, from the application as filed.

Given that the same test applies for positively defined amendments and the undisclosed disclaimers in question, the Board stated that the well-established case law concerning added matter would apply equally to disclaimers. Thus, an undisclosed disclaimer of disclosed subject matter is likely to be unallowable if it leads to the singling out of compounds or sub-classes of compounds, or other so-called intermediate generalisations not specifically mentioned nor implicitly disclosed in the application as filed.

Significantly, the Board rejected a “rules of logic” approach to determining what was disclosed in the application as filed, stating that if an application discloses an embodiment [B] falling within a broader region [A], it does not inevitably disclose the subject matter of the broader region minus the embodiment [A-B]. One must instead return to the disclosure test set out above.

In perhaps the most helpful passage of the decision (Reasons, 4.5.4), the Board gave an example, albeit in general terms, of the types of disclaimer which are allowable and those which will add matter:

“Where, for instance, […] in the application as filed an invention has been disclosed and claimed in general terms and different specific embodiments or groups thereof have also been disclosed, and one of these is later excluded from the requested protection by the disclaimer, the remaining subject-matter, i.e. the remaining general teaching, will normally not be modified by the disclaimer.”

For example, if there was a claim to “an article”, and the description discloses 3 independent specific embodiments [A], [B], and [C], then a claim to “an article, wherein the article is not [C]” would apparently not add matter (subject to interpretation of the word “normally” in the passage above). The Board clarified that:

“This contrasts with the situation in which, for instance, the disclaimer would have the effect of confining the subject-matter remaining in the claim to a subgroup of the originally claimed subject-matter, which subgroup could not be regarded as disclosed in the application as filed, even taking into account what the skilled person, using common general knowledge, would regard as implicit in the contents of the application as filed. In this case the amendment would contravene Article 123(2) EPC.

[…] [T]here would be added matter where the insertion of a disclaimer into a claim would result in singling out any hitherto not specifically mentioned or at least implicitly disclosed individual compound or group of compounds, or would lead to a particular meaning of the remaining claimed subject-matter which was not originally disclosed.”

To appreciate this, consider a claim to “a chemical composition comprising components [A], [B] and [C]”. The description discloses that component [A] could be [A1], [A2] or [A3]; component [B] could be [B1], [B2] or [B3]; and component [C] could be [C1], [C2] or [C3]; no specific embodiments are disclosed. It would then not generally be allowable to claim “a chemical composition comprising [A], [B] and [C], wherein [A] is not [A2] and wherein [C] is not [C3]”. This is because the subgroup remaining in the claim (i.e. the combination of components that remain) is not unambiguously derivable from the application as filed – such a subgroup results in the singling out of a group of compounds which were not hitherto specifically mentioned. If, on the other hand, the description disclosed a specific embodiment comprising [A1], [B1] and [C1], our current understanding of the above passages is that a claim to “a chemical composition comprising components [A], [B] and [C], wherein the composition is not [A1], [B1] and [C1]” would not add matter.

Although the above passages give some guidance, it remains to be seen exactly how the decision will be interpreted by the Technical Boards of Appeal and Examining Division. The use of the word “normally” in the above passage appears to give them room to make up their own mind, even when the situation falls into the first case which the Enlarged Board has stated “normally” would not add matter.

There is therefore still a degree of uncertainty over what will constitute an allowable disclaimer, and it may be some time before we are provided with total clarity on the interpretation of the decision. Until then, it may well be worth attempting to us such disclaimers in certain cases.

Final Considerations

Even if a novelty-destroying document can be overcome by including an undisclosed disclaimer of disclosed subject matter, the claim must still be shown to have an inventive step. This may be problematic, as unlike disclaimers used to overcome novelty-only prior art or accidental anticipations (i.e. those undisclosed disclaimers allowed by G01/03), the novelty-destroying document can still be used in an inventive step attack. Accordingly, the usefulness of undisclosed disclaimers of disclosed subject matter may be limited to situations where the prior art is not relevant to inventive step (for example in a different technical field), or where the disclaimer is being introduced in light of a double patenting problem.

  1. EPO Enlarged Board of Appeal Decision G02/10
  2. EPO Enlarged Board of Appeal Decision G01/03
  3. EPO Enlarged Board of Appeal Decisions (sorted by number)

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.

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