Disclaiming disclosed subject-matter allowable by the EPO following G 2/10
September 2, 2011
Amendments under the EPC are governed by Article 123(2) EPC, and may not result in an extension of the subject-matter beyond the content of the application as filed. In the decision G 2/10 of the Enlarged Board of Appeal dated 30 August 2011, it has been established that:
1a. An amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed infringes Article 123(2) EPC if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.
1b. Determining whether or not that is the case requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after the amendment.
The question to be answered by the Enlarged Board was whether an amendment to a claim by the introduction of a disclaimer infringes Article 123(2) EPC if the subject-matter of the disclaimer was disclosed as an embodiment of the invention in the application as filed.
The issue of allowability of disclaimers has previously been the subject of cases before the EPO’s Enlarged Board of Appeal. The decisions G 1/03 and G 2/03 deal with the question of “undisclosed disclaimers”, i.e. situations in which neither the disclaimer nor the subject-matter excluded by it from the scope of the claim has a basis in the application as filed.
After the issuance of G 1/03 and G 2/03, a restrictive approach to the allowability of disclaimers has emerged in the case law of the boards of appeal. According to this approach, disclaimers which exclude subject-matter disclosed as an embodiment of the invention in the application as filed are regarded as non-disclosed disclaimers and held unallowable under Article 123(2) EPC unless they fall under one of the exceptions laid down in decisions G 1/03 and G 2/03. In the present decision, the Enlarged Board concludes that such a reading of G 1/03 and G 2/03 is incorrect, and concludes that, as in the case for any other amendment, 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. Whether the skilled person is presented with new technical information depends on how he or she would understand the subject-matter remaining in the amended claim, and on whether, using common general knowledge, he or she would regard that subject-matter as at least implicitly disclosed in the application as filed.
It is emphasized by the Enlarged Board that this approach preserves the structural relationship in the EPO between the provisions defining the content of the state of the art and its impact on patentability, the substantive requirements for validly claiming a priority or for the filing of divisional applications and for the right to amend the application. It is considered vital that the rights of an applicant are uniformly determined in all these contexts as extending to, and being limited to, the disclosure made at the relevant point in time.
A practical consequence of this decision is that it will be possible to disclaim the scope of the claims of a more restricted patent from the broader scope of a divisional application, provided the subject-matter remaining in the claim after such limitation can be regarded as disclosed in the application as filed.
Inga-Lill Andersson & Mikael Henriksson
European Patent Attorneys
Link to decision G 2/10 (pdf)
2 September 2011