Disclaimers at the EPO: an update with decision G1/16

On December 18, 2017, the Enlarged Board of Appeal published decision G1/16 on the allowability of disclaimers. This decision clarifies the requirements for allowing a so-called ‘undisclosed’ disclaimer at the European Patent Office. This article will provide a reminder of the background behind decision G/16, present the content of the decision and draw conclusions on the practice of disclaimers at the EPO.

Paris, 7 August 2018 – On December 18th, 2017 the Enlarged Board of Appeal (EBA) published decision G1/16 on the allowability of disclaimers. This decision clarifies the requirements for allowing a so-called ‘undisclosed’ disclaimer, at the European Patent Office.

Even though the term ‘undisclosed’ disclaimer is not defined in the European Patent Convention (EPC), the practice of the EPO recognizes different categories of disclaimers – namely ‘disclosed’ disclaimers, and ‘undisclosed’ disclaimers. These categories have been forged by the case law of the EPO, and are now generally well-understood and accepted by practitioners. These categories shall be explained further in this article.

This short article will provide a reminder of the background behind this decision, present the content of the decision, and draw conclusions on the practice of disclaimers at the EPO.

1 – Background of G1/16

1.1 – What is a disclaimer?

A disclaimer is a particular type of amendment. Therefore, in general, requirements concerning amendments should also apply to disclaimers. As a European patent application or European patent may be amended in examination, opposition and limitation proceedings, disclaimers may be filed at these stages of proceedings.
However, since disclaimers are a very specific type of amendment, specific requirements apply.

Even though the term ‘disclaimer’ is not defined in the EPC, it is important to understand precisely what this term designates. Indeed, as we shall see in this article, in some cases the requirements applied for allowing disclaimers are different from the requirement applied for allowing other types of amendments.

The term “disclaimer” is used, in particular, in two important decisions, namely G 2/10 and G 1/03, as meaning an amendment to a claim resulting in the incorporation therein of a “negative” technical feature, typically excluding from a general feature specific embodiments or areas.

Decision T 1870/08 further defines disclaimers, by specifying that in a proper disclaimer the remaining subject-matter (after the disclaimer is applied) is less than that of the unamended claim. If any subject-matter can be identified within the scope of the claim after amendment by the proposed disclaimer, but was not before the amendment, the disclaimer is improper.

For example, a negative formulation removing a restricting feature may look like a disclaimer but may in fact extend the legal scope of protection.

Disclaimers are sometimes used in the fields of biotechnology, pharmaceuticals, and chemistry. However, they are not considered to be limited to these technical fields and can, at least theoretically, concern all technical fields.

1.2 – Reminder on allowability of amendments

As a reminder, an amendment must fulfil two requirements: the amendment must be admissible, and it must also be allowable.

Admissibility is a procedural requirement. An amendment is considered admissible if the competent department of the EPO admits the amendment into the procedure. How the admissibility of amendments is assessed will depend on the type of procedure (examination, opposition or limitation).

Allowability is a substantive requirement. This requirement implies, in particular, that an amendment must not:

  • (i) add to the application or patent subject-matter which was not disclosed in the application as originally filed (Art. 123(2) EPC)
  • (ii) introduce other deficiencies (such as lack of clarity in the claims – Art. 84 EPC)
  • (iii) extend the protection conferred by a granted patent (Art. 123(3) EPC).

Thus, the requirement of Art. 123(2) EPC (‘The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed’) is not the only requirement for allowing an amendment. Still, in many cases this requirement is considered as decisive for allowing or refusing an amendment.

As many practitioners (inside and even outside Europe) are well aware, the requirement of article 123(2) EPC is applied in a strict manner by the EPO. While the EPC does not require that literal support should be present in the description for allowing an amendment, it is sometimes difficult to appreciate to what extent one can depart from such literal support for forming an amendment that will be considered allowable.

The case law of the EPO has forged a so-called ‘gold’ standard for assessing Art. 123(2) EPC. According to this gold standard, any amendment to a European patent application or of a European patent can only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the disclosure of the application as filed. For more details on this gold standard, one can refer to decisions such as G2/10, G3/89 and G11/91.

The gold standard has thus been established as the reference test for assessing whether an amendment is allowable under Art. 123(2) EPC.

The questions referred to the EBA in case G1/16 refer to the application of this gold standard, in the case of an amendment made in the form of an ‘undisclosed’ disclaimer.

1.3 – A short history of disclaimers at the EPO

Disclaimers have been used for many years at the EPO. Initially, the conditions for allowing a disclaimer were not precisely defined, as no standard or test for allowing a disclaimer had been set. In the early years of the EPO, some decisions allowed disclaimers with no basis in the application as filed.

A rationale of this situation was apparently that as long as the result of an amendment was a reduction of the scope of the claims, the amendment should be allowable. Under this approach, the requirement of Art. 123(2) EPC was possibly overlooked, or even ignored, when it came to the allowability of a disclaimer.

Also, with no clear standard available for allowing a disclaimer, disclaimers were sometimes drafted in a rather “loose” manner, possibly excluding from the claim more subject-matter than was actually necessary e.g. to restore novelty over a given prior art.

In 2001, decision T 323/97 took position against this situation. This decision made the point that ‘An amendment to a patent by the introduction of a “negative” technical feature into a claim resulting in the exclusion of certain embodiments is, regardless of the name “disclaimer”, none the less an amendment governed by Articles 123(2) and (3) EPC’.

This decision recalled that the introduction of a negative feature into a claim, resulting in the exclusion of certain embodiments, is an amendment governed by Art. 123(2) and (3) EPC. According to this decision, any amendment of a claim not having support in the application as filed and aiming at further distancing the claimed subject-matter from the state of the art, in particular by way of a disclaimer, contravenes Art. 123(2) EPC and is consequently unallowable.

T 323/97 thus concluded that, as a general rule, the maintenance of the practice of the earlier decisions to admit disclaimers having no basis in the application as filed could not be justified, and that the amendment brought by the disclaimer has to be assessed in accordance with Art. 123(2) EPC.

However, beyond this general rule, another question still to be answered was how the requirement of Art. 123(2) EPC was to be assessed in the case of disclaimers.

There remained a need for criteria defining when disclaimers should be allowed.

Indeed, earlier decisions had defined only a number of limited situations where disclaimers may or may not be allowed. No general criteria, let alone rules, had been drawn.

Even though no general criteria were available for allowing disclaimers, some patterns had nevertheless emerged from the case law. In particular the following was recognized:

  • a disclaimer is not a ‘routine’ amendment. Negative limitations such as disclaimers may be used only if adding positive features to the claim either would not define more clearly and concisely the subject-matter still protectable (see decision T 4/80, and later G 1/03) or would unduly limit the scope of the claim (see decision T 1050/93).
  • Also, the clarity requirement must be fulfilled: it has to be clear what is excluded by means of the disclaimer (see decision T 286/06). Furthermore, a claim containing one or more disclaimers must also fully comply with the clarity and conciseness requirements of Art. 84 EPC (see G 1/03, Reasons 3).

It is also noteworthy that decision G1/93 has recognized that a non-technical limitation of claims should be allowable. According to this decision, a feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed in the sense of Article 123(2) EPC.

This leaves open the question of whether a limitation to a claim is ‘technical’, or ‘non-technical’ – this question is to be appreciated on a case-by-case basis.

We shall see in the next section of this article how the case law from the EPO has developed criteria for allowing disclaimers in specific situations, corresponding to the definition of different types of disclaimers – namely, ‘disclosed’ disclaimers and ‘undisclosed’ disclaimers.

1.4 – ‘disclosed’ disclaimers and ‘undisclosed’ disclaimers – issues generated by the case law

Once it had been recognized, with decision T 323/97, that the requirement of Art. 123(2) EPC had to be taken into account for allowing a disclaimer, the case law further evolved in a way that distinguished two main types of disclaimers.

For introducing these two types of disclaimers, let us consider by way of example a patent application (or a patent, if the disclaimer were to come after grant) where the specification as filed (the ‘original disclosure’) discloses a new process (e.g. a process of heat treatment) applied to semiconductor materials. Such semiconductor materials include several materials, such as silicon, germanium, and other materials.

Let us consider that a claim in the application as filed recited the process applied to semiconductor materials in general. In this situation, we shall consider several scenarios where the applicant (or patentee) wishes to amend this claim by excluding the application of the process to silicon.

One possible reason for this amendment may be that the applicant/patentee has become aware of a particular prior art disclosing the process applied to silicon only.

If the original disclosure disclosed the process applied to semiconductor materials other than silicon (in other words, if the application as filed disclosed that in an embodiment silicon may be excluded from the group of semiconductor materials suitable for the process), then the original disclosure discloses the subject-matter of the amended claim.

In such a situation, the requirement of Art. 123(2) EPC is fulfilled and the disclaimer (excluding silicon from the process) is clearly allowable.

Now, let us consider a situation in which the original disclosure did not disclose the process applied to semiconductor materials other than silicon.

In such case, the case law has distinguished two different situations for assessing allowability of the disclaimer that would exclude silicon.

If the original disclosure does not contain a mention of the application of the process specifically to silicon, i.e. it does not distinguish the case where the process is applied to silicon, then the intended disclaimer is considered to be an ‘undisclosed’ disclaimer.

If the original disclosure contains a mention of the application of the process specifically to silicon, i.e. it distinguishes the case where the process is applied to silicon, then the intended disclaimer is considered to be a ‘disclosed’ disclaimer.

General definitions of the terms ‘undisclosed’ and ‘disclosed’ disclaimers have been confirmed in G1/16:

“The term “undisclosed disclaimer” relates to the situation in which neither the disclaimer itself nor the subject-matter excluded by it have been disclosed in the application as filed.

The term “disclosed disclaimer” relates to the situation in which the disclaimer itself might not have been disclosed in the application as filed, but the subject-matter excluded by it has a basis in the application as filed, e.g. in an embodiment”.

  • In the first situation (‘undisclosed’ disclaimer), decisions G1/03 and G2/03 – which are identical and the rest of this article shall refer to G1/03 only – define criteria for allowing such an ‘undisclosed’ disclaimer.

G1/03 shall be commented in some detail, as it is an important reference in the discussion of disclaimers, and in understanding the recent decision G1/16. G1/03 is available at:

http://www.epo.org/law-practice/case-law-appeals/pdf/g030001ex1.pdf.

G1/03 includes a review of EPO practice. It also includes comments filed by the President of the EPO, in this case providing a reminder that even though disclaimers should not be seen as a routine procedure, they should nevertheless be legitimate in some specific situations.

These particular situations are those which the applicant could not have anticipated at the time of filing the application, or those for taking into account exclusions from patentability.

According to G1/03, situations which the applicant could not have anticipated at the time of filing the application can occur:

  • in the case of encountering state of the art under Art. 54(3) EPC, and
  • in the case of an accidental anticipation.

The state of the art under Art. 54(3) EPC corresponds to the content of European patent applications as filed, the filing dates of which are prior to the filing date of the patent/application under consideration (the patent/application for which a disclaimer is sought) and which were published on or after that date.

An anticipation (i.e. information made available to the public before the filing date of the patent, constituting potentially relevant prior art) is considered as ‘accidental’ if said anticipation is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention.

A remote technical field and a remote problem to be solved are indicia commonly used for arguing the ‘accidental’ character of an anticipation.

Concerning exclusions from patentability, in G1/03 the EBA explained that an applicant may have to exclude certain subject-matter from the scope of a claim in order to avoid an exclusion from patentability.

As an example, the EBA mentions the situation for the avoidance of certain unwanted offspring in an invention, “due to certain properties (sex, colour, health), for economic reasons, this being quite legitimate for domestic animals whereas when applied to human beings it would be contrary to “ordre public” or morality”.

The EBA illustrates this situation as follows: “Suppose the application contains a broad teaching applicable to mammals in general and mentions cattle as specific embodiments and the claims are directed to the treatment of mammals, a disclaimer necessary to exclude human beings in order to satisfy Article 53(a) EPC could not be based on the original text of the application which would only cover a broader limitation to cattle”.

In such a situation, the applicant would have an interest in disclaiming the treatment of human beings, even though this specific treatment is not disclosed in the application as filed.

The EBA considers that an applicant legitimately wishing to obtain protection in a large number of jurisdictions “cannot be expected to check the substantive patent law of all possible states before filing the application and to introduce appropriate limitations in order to cope with any exclusions which he might later face in the respective states”. Therefore, it may be legitimate for an applicant to use disclaimers to adapt the scope of the claims of his patent application to local exclusions from patentability.

G1/03 created for ‘undisclosed’ disclaimers what could appear to be an exception to the general rule promoted by the earlier decision T 323/97. G1/03 indeed recites that “an amendment to a claim by the introduction of a disclaimer may not be refused 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”.

Under this exception, G1/03 considers that an ‘undisclosed’ disclaimer may be allowable, in very specific situations, namely in order to:

  • restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC;
  • restore novelty by delimiting a claim against an accidental anticipation; and
  • disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons.

It is to be noted that in this decision the EBA has used the wording “may” (“a disclaimer may be allowable”). The criteria defined by G1/03 thus seem to appear as necessary conditions for an ‘undisclosed’ disclaimer to be allowable, however these criteria are not clearly presented as sufficient conditions.

G1/03 also made it clear that “a disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons”. Therefore, the disclaimer must be drafted precisely for excluding only the subject-matter that created the specific situation allowing the disclaimer (prior art under Art. 54(3) EPC, accidental anticipation, or exclusion from patentability).

Interestingly, G1/03 also recited that “a disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to

Article 123(2) EPC”. This is a further illustration that a disclaimer can possibly be allowed only for addressing the specific situation allowing the disclaimer: a disclaimer cannot be used to reinforce the position of the applicant with respect to inventive step, or to sufficiency of disclosure.

This illustrates that the exception created by G1/03 is not only narrow, but also potentially dangerous for the applicant. Indeed, it is difficult to foresee if a disclaimer may become relevant for the assessment of inventive step or sufficiency of disclosure. If at any point in time it can be proved that the disclaimer is in fact relevant to one of these issues, the disclaimer becomes unallowable and must be withdrawn. This may also be possible after grant of the patent, since added subject-matter is a ground of revocation in opposition and in nullity proceedings Thus, in such a situation, the disclaimer may become unacceptable and need to be withdrawn.

On the other hand, according to Art. 123(3) EPC and to Art. 138(1)(d) EPC, the European patent may not be amended in such a way as to extend the protection it confers. It is therefore not possible to remove a disclaimer from a claim after the grant of a patent. If a disclaimer becomes unallowable after grant (e.g. in opposition or nullity proceedings), the patentee faces a fatal trap.

G1/03 did not address the case of ‘disclosed’ disclaimers.

However, in G1/03 the EBA did not explicitly recite that the decision was not applicable to disclaimers other than ‘undisclosed’ disclaimers. In particular, it remained uncertain whether the criteria set out by G1/03 were also applicable to ‘disclosed’ disclaimers

To further clarify this point, let us consider the second situation mentioned above with respect to the example on semiconductor materials and silicon.

  • In the second situation – ‘disclosed’ disclaimers – G2/10

After G1/03 brought clarification on how ‘undisclosed’ disclaimers should be handled, further clarification was needed, as described above.

G1/07 is another decision from the EBA. The point of this decision is not the allowability of disclaimers and therefore this decision does not bring further clarification on this issue. However, this decision confirms the need for clarification on how the teachings of G1/03 should be applied (reasons 4.2.3 of G1/07): “different opinions have been expressed in the jurisprudence of the boards of appeal on whether decisions G 1/03 and G 2/03 relate to the disclaiming of embodiments which (…) are disclosed in the application as filed”.

Indeed, clarification was needed for the case of ‘disclosed’ disclaimers. A request for this clarification took the form of a question referred to the EBA, in case G2/10: “Does a disclaimer infringe Article 123(2) EPC if its subject-matter was disclosed as an embodiment of the invention in the application as filed?” This decision is available at:

http://www.epo.org/law-practice/case-law-appeals/pdf/g100002ex1.pdf.

In its discussion, G2/10 recalled that until G1/03, and even after this decision, the “established case law following decision T 4/80 the first instance practice was to accept that, if specific subject-matter was originally disclosed as a possible embodiment of the invention, a disclaimer could be introduced into the claim in order to exclude this embodiment from the scope of protection, provided the subject-matter remaining claimed could not be defined more clearly and concisely by positive features or if such positive definition would unduly limit the scope of the claim”.

Thus, following decision T4/80, the first instance practice was to accept that ‘disclosed’ disclaimers could be allowable relatively easily.

However, since several decisions seemed to consider that such ‘disclosed’ disclaimers should also fulfil the criteria set out by G1/03, clarification was needed.
Clarification was all the more necessary since the ‘test’ of T4/80 did not amount to fulfilling the gold standard with respect to Art. 123(2) EPC.

G2/10 answered as follows:

“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”.

Therefore, G2/10 brought an end to the relatively easy ‘test’ of T4/80 and confirmed that the gold standard should be fulfilled for ‘disclosed’ disclaimers: the disclaimer must – be it explicitly or implicitly – be directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.

This confirmation by G2/10, that the gold standard must be fulfilled for ‘disclosed’ disclaimers, brought some clarification.

However, determining whether or not the subject-matter remaining in the claim after the introduction of the disclaimer is, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge in the application as filed can be a tricky exercise and raises further questions. These questions are not the focus of the present article; they are merely mentioned for the record.

Furthermore, several passages in G 2/10 suggest that the test of the gold standard should be applied in the assessment of any amendment, including ‘undisclosed’ disclaimers, for compliance with Article 123(2) EPC.

This situation generated an ambiguity, as it made uncertain whether ‘undisclosed’ disclaimers should be assessed:

  • taking into account only the criteria set out by G1/03, i.e. for such ‘undisclosed’ disclaimers the gold standard should be ignored, OR
    if these criteria should be somehow combined with the test of the gold standard, OR
  • if the gold standard should be used alone, and the criteria set out by G1/03 should be ignored (even though this perspective would leave only very little room for ‘undisclosed’ disclaimers).

G1/16 aims to resolve this ambiguity.

2 – Decision G1/16

Decision G1/16 is available at :

http://www.epo.org/law-practice/case-law-appeals/pdf/g160001ex1.pdf.

2.1 – The questions

In case G1/16 the following question have been referred to the EBA:

“Question 1: Is the standard referred to in G 2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC, i.e. whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed, also to be applied to claims containing undisclosed disclaimers?

Question 2: If the answer to the first question is yes, is G 1/03 set aside as regards the exceptions relating to undisclosed disclaimers defined in its answer 2.1?

Question 3: If the answer to the second question is no, i.e. if the exceptions relating to undisclosed disclaimers defined in answer 2.1 of G 1/03 apply in addition to the standard referred to in G 2/10, may this standard be modified in view of these exceptions?”

2.2 – Views expressed

Parties were invited to make comments and eleven amicus curiae briefs were filed. AIPPI filed an amicus curiae brief, which supported the application of the criteria set out by G1/03 to ‘undisclosed’ disclaimers, and which advocated that the gold standard established by the EPO case law for ‘disclosed’ disclaimers should not be applied to ‘undisclosed’ disclaimers. Most amicus curiae briefs filed in this case took the same or a similar view.

In G1/16, the EBA summarized arguments submitted by interested parties (parties to the referring decision T437/14, and parties having filed comments or amicus curiae briefs).

The majority of amicus curiae briefs did not support also applying the gold standard to ‘undisclosed’ disclaimers, i.e. the majority of the briefs filed supported a ‘No’ answer to question 1.

However, some amicus curiae briefs advocated for a ‘Yes’ answer to question 1, as did the EPO.

According to these briefs, G 1/03 did not define exceptions to the gold standard, and the criteria set out by G1/03 are intended to limit the admissibility of ‘undisclosed’ disclaimers.

Once the admissibility of such an ‘undisclosed’ disclaimer had been established, its allowability was then to be examined in accordance with the gold standard.

On the other hand, proponents of a ‘No’ answer to question 1 supported their views with a number of arguments, including the following:

  • The “guidance” provided by specific criteria in specific situations such as G1/03, G2/03 and G 2/10 was only to be used in appropriate circumstances to assist in determining whether the gold standard had been applied correctly. In other words, these criteria should replace the general test offered by the gold standard when the specific situations arise.
  • The types of disclaimer dealt with in G 1/03 (‘undisclosed’ disclaimers) and G 2/10 (‘disclosed’ disclaimers), respectively, were completely different and mutually exclusive.
  • The EBA in G 1/03, in allowing ‘undisclosed’ disclaimers, did not deviate from the gold standard; it just followed a different approach for exceptional circumstances.

2.3 – Reasons of the decision

The EBA made clear that G1/16 is neither aimed at, nor would allow, a “rectification” or even a review of either of earlier decisions G1/03 and G2/10.
After having exposed the positions of interested parties, and having acknowledged the admissibility of the referral, the EBA in G1/16 detailed a number of issues in some detail:

  • Presentation of decisions G 1/03 and G 2/10,
  • Definition of disclaimer,
  • Definition of the gold standard,
  • Review of the jurisprudence of the EPO technical boards of appeal on disclaimers,
  • Review of European national jurisprudence on disclaimers,
  • Interpretation of Article 123(2) EPC,
  • Clarification of different types of undisclosed disclaimers,
  • Standards for examining undisclosed disclaimers.

The EBA confirmed that for ‘disclosed’ disclaimers, “as held in G 2/10, for a claim amendment by the introduction of a disclosed disclaimer to be allowable under Article 123(2) EPC, the gold standard is the only test to be met”.

Turning to ‘undisclosed’ disclaimers, the EBA at last recalled a point of common sense (reason 42): “the application of the gold standard disclosure test of G 2/10 when assessing whether a claim amended by the introduction of an undisclosed disclaimer complies with the requirements of Article 123(2) EPC leaves virtually no chance of an undisclosed disclaimer being allowable.”

Indeed, an ‘undisclosed’ disclaimer will hardly be found “directly and unambiguously disclosed” in the application as filed. Such a disclaimer being undisclosed, one can expect that it is simply absent from the application as filed.

Thus, G1/16 reached a clarification that may seem trivial, but is nevertheless welcome:

  • ‘disclosed’ and ‘undisclosed’ disclaimers are of two different types and are mutually exclusive (i.e. a disclaimer cannot be both a ‘disclosed’ and an ‘undisclosed’ disclaimer).
  • the choice of the proper test for assessing the allowability of any disclaimer is determined by the fundamental distinction, in terms of their legal nature, between disclosed disclaimers and undisclosed disclaimers.
  • that distinction necessitates providing for each of the two classes of disclaimer a single specific test for assessing whether the introduction of a given disclaimer is in compliance with Article 123(2) EPC.
  • For undisclosed disclaimers the proper test is whether the criteria of G 1/03 are fulfilled, and for disclosed disclaimers the proper test is the gold standard disclosure test of G 2/10.

2.4 – Answer to the questions

The EBA concludes by the following answers:

“For the purpose of considering whether a claim amended by the introduction of an undisclosed disclaimer is allowable under Article 123(2) EPC, the disclaimer must fulfil one of the criteria set out in point 2.1 of the order of decision G 1/03. The introduction of such a disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular, it may not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure. The disclaimer may not remove more than necessary either to restore novelty or to disclaim subject-matter excluded from patentability for nontechnical reasons”.

2.5 – After G1/16

G1/16 brings a useful clarification over a background that had been made unclear with the evolution of EPO case law. This decision is thus welcome.
Incidentally, this decision once again confirms the admissibility of undisclosed disclaimers at the EPO.

G1/16 has now set a clear standard for ‘undisclosed’ disclaimers. It remains to be seen whether European patents or applications comprising ‘undisclosed’ disclaimers which are not in line with this standard will be subject to further review.

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