Ambiguities in the previous decisions of the Boards of Appeal, regarding allowability of disclaimers seem now to be resolved.
According to the recent decision of the Enlarged Board of Appeal G1/16 in the opposition appeal proceedings between two US Universities and Merck Patent GmbH, 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.
In the decisions of the Enlarged Boards of Appeal G 1/03 and G 2/03, the following definition of Disclaimer is given: “…an amendment to a claim resulting in the incorporation therein of a negative technical feature, typically excluding specific embodiments or areas from a general feature”. Further, according to T 1870/08, a disclaimer is only a proper disclaimer if the remaining legal subject-matter is less than that of the unamended claim.
A disclaimer can be needed e.g. for disclaiming a subject matter excluded from patentability under Article 53 EPC or to establish novelty under Article 54(2), (3) EPC. It can be regarded as a kind of last resort to rescue a patent application or patent.
The decisions G 1/03 and G 2/03 postulate three exceptions (in the following referred to as “ABC test”) when undisclosed disclaimer may be allowable:
A. to restore novelty by delimiting a claim against state of the art under Article 54(3) EPC;
B. to restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC; and
C. to disclaim subject-matter which is excluded from patentability for non-technical reasons.
Further, according to G1/03, G2/03, a disclaimer which is relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to Article 123(2) EPC. Therefore, such a disclaimer would offend against the EPC and is thus inadmissible. Furthermore, 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.
According to the Decision of the Enlarged Board of Appeal G 1/07, “by disclaiming an embodiment” the claim including disclaimer must fulfil all the requirements of the EPC and the requirements for a disclaimer to be allowable as defined in decision G 1/03 and G 2/03, whereby whether or not the disclaimer complies with the EPC must be assessed on the basis of the overall circumstances of the individual case under consideration.
It means that an undisclosed disclaimer has to fulfil both the “ABC test”, on the one hand, and all the requirements of the EPC, on the other hand, which inter alia include the requirements to amendments as laid down in Article 123(2) EPC. According to G2/10, disclaiming subject matter disclosed in the application as filed can also infringe Article 123(2) EPC 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 (so called „Gold Standard Test”). Moreover, according to T 1441/13 referring to G2/10, this (i.e. “Gold Standard”) is “the overriding principle“ for any amendment to be allowable under Article 123(2) EPC that applies equally to the subject matter of a claim the scope of which is determined by a disclaimer“ be it an undisclosed or a disclosed disclaimer.
The formulation “undisclosed and directly and unambiguously derivable”, is actually a contradiction, since two mutually excluding conditions must be fulfilled at the same time.
The Decision G 1/16, (Reason 48) resolves this problem by making clear that application of the standard (i.e. “ABC test”) for the assessment of undisclosed disclaimers does not in any way obviate the need for the subject-matter of the claim as amended to meet the other requirements of the EPC, in particular those of novelty and inventive step, sufficiency of disclosure, clarity and of the requirements of Article 123(2) EPC in respect of claim features other than the undisclosed disclaimer.
In this way, the Board managed to come up with a Solomon-like solution, combining both the “Gold Standard” and the “ABC Test”, without diminishing the importance of any of these tests.