The Decision of the Enlarged Board of Appeal G 1/16 has recently become available on the Internet. The Decision has clarified, that it will remain possible to use undisclosed disclaimers. In the following, we will give a brief overview of the development of the case law that led to this Decision, and provide you with our conclusion as to what impact this Decision of the Enlarged Board of Appeal (EBoA) is likely to have on the practice.
With the Decision T0437/17, dated 17 October 2016, the Technical Board of Appeal called into question the established practices of the European Patent Office in relation to so-called undisclosed disclaimers.
The Technical Board of Appeal submited the following referral question to the Enlarged Board of Appeal:
“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?”
The Technical Board of Appeal had submitted two further questions, which are, however, not of importance anymore since the first question has been answered with “no” by the EBoA.
The Technical Board of Appeal posed the question as to whether the criteria established in decision G 2/10, relating to the disclosed disclaimer, should also, in future, apply to undisclosed disclaimers, which would have made it virtually impossible to use an undisclosed disclaimer.
A disclaimer is understood as a “negative” technical feature that excludes specified subject-matter or areas from a more general characteristic. Established case law of the Technical Boards of Appeal and the Enlarged Board of Appeal has revealed that there has to be a distinction made with respect to the permissibility of using an undisclosed disclaimer over the use of a disclosed disclaimer. An undisclosed disclaimer is one where the excluded subject-matter was neither disclosed negatively nor positively in the original application. If such disclosure unambiguously exists, one is referring to a disclosed disclaimer.
With respect to the permissibility of the undisclosed disclaimer, the Enlarged Board of Appeal established in its decision G 1/03 the following criteria:
“1. A disclaimer may be permissible if it serves to:
3. A disclaimer that is or becomes relevant for assessing the inventive activity or the sufficiency of disclosure constitutes an impermissible enlargement under Articles 123(2) EPC.”
These criteria thus allow for the introduction of an undisclosed disclaimer in a claim as a delimiting means against novelty destroying prior art, which may be construed as an exception from the general provision under Article 123(2) EPC.
In the subsequent Decision G 2/10, the Enlarged Board of Appeal stated its position with respect to the permissibility of the disclosed disclaimer, and ruled that the introduction of such a disclaimer only infringes Art. 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.”
This criterion is also referred to as the “gold standard”.
In practice, the criteria established by the European Patent Office in Decision G 1/03 on the one hand, and Decision G 2/10 on the other, have happily co-existed. With regard to the admissibility of an undisclosed disclaimer, different criteria from those used for the question of admissibility of a disclosed disclaimer have developed.
It is exactly this issue which was taken up by T0437/14, and the question arose whether this “gold standard” should also be applied to questions regarding the admissibility of undisclosed disclaimers.
In the Decision, the EBoA has chosen to answer only question 1, as follows:
“In respect of question 1, the EBoA while confirming decision G 1/03, holds that the gold standard disclosure test referred to in decision G 2/10 is not the relevant test for examining whether a claim amendment by an undisclosed disclaimer complies with the requirements of Article 123(2) EPC. However, rather than simply answering that question in the negative, the EBoA considers it appropriate also to provide the following clarification of how the criteria laid down in G 1/03 are to be applied when assessing the allowability of an amendment to a claim by the introduction of an undisclosed disclaimer:
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-matterdisclosed 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 non-technical reasons.
In the light of the answer given to question 1, the other two questions do not need to be answered.”
In other words, the EBoA has answered question 1 with “no” and ruled that the standards referred to in G 2/10 are not to be applied to claims containing undisclosed disclaimers. Accordingly, it will still be possible in the future to use undisclosed disclaimers.
While the Decision confirms the allowability of undisclosed disclaimers in principle, it does by no means give a “free ride” for undisclosed disclaimers in the future. Rather, the Decision provides standards for the allowability of undisclosed disclaimers which leave room for interpretation by case law to be followed.
The EBoA categorizes the undisclosed disclaimers into four categories A-D, namely:
The EBoA clarifies that type D-disclaimers go beyond the criteria laid down in G 1/03 and can therefore not be justified.
Concerning the allowability of undisclosed disclaimers of types A, B, and C, the EBoA acknowledges that
“the idea underlying Art. 123 (2) EPC is that an applicant or patent proprietor should not be allowed to improve his position by adding subject matter not disclosed in the application as filed, as this would give him an unwarranted advantage […]”.
The criteria that will govern whether such an undisclosed disclaimer could give the applicant/patentee an unwarranted advantage, are outlined, in a very general way, in para 46.4 of G 1/16:
“The question to be asked in this context is not whether an undisclosed disclaimer quantitatively reduces the original technical teaching - this is inevitably the case as was explained above - but rather whether it qualitatively changes it in the sense that the applicant's or patent proprietor's position with regard to other requirements for patentability is improved.
If that is the case, then the original technical teaching has been changed by the introduction of the disclaimer in an unallowable way.
[…]
It is noted for the sake of completeness that the prohibition of a qualitative change in the original teaching applies in an absolute way, i.e. not only with regard to the prior art which provides the basis for the undisclosed disclaimer, but also to the entire prior art relevant for the assessment of inventive step. In practical terms, this means that the evaluation of inventive step has to be carried out disregarding the undisclosed disclaimer.”
Accordingly, it seems that the distinction between allowable and unallowable undisclosed disclaimers of the types A, B, and C is found in the criterion whether they quantitatively reduce the original technical teaching or rather qualitatively change the teaching. If the latter is the case, the undisclosed disclaimer is not allowable. In any case, the evaluation of inventive step has to be carried out disregarding the undisclosed disclaimer.
In our opinion, it is good news for the practice that the Enlarged Board of Appeal has confirmed the allowability of undisclosed disclaimers at least in principle. The undisclosed disclaimer therefore remains in place as an instrument which seems fair to applicants and patent proprietors.
However, the Enlarged Board of Appeal provides a quite abstract criterion that limits the allowability of such undisclosed disclaimers. An undisclosed disclaimer is only allowable as long as it only quantitatively reduces the original technical teaching and does not qualitatively change it. This criterion leaves room for interpretation for future case law and applicants are well-advised to formulate claims and text in the description with great care, including respective fallback positions, since the allowability of an undisclosed disclaimer as a “lifesaver” is by no means guaranteed.
» Decision of the Enlarged Board of Appeal G 1/16 rendered - The Undisclosed Disclaimer Stays Alive (PDF)