EPO Enlarged Board to Consider Disclaimers Again

A Technical Board of Appeal (TBA) of the European Patent Office (EPO) has recently referred a question to the Enlarged Board of Appeal (EBA) concerning disclaimers in patent claims.  In particular, the EBA has been asked to consider whether it is possible to disclaim subject matter which was originally presented as part of the invention.

The subject-matter of a claim is normally defined in terms of positive features, i.e. indicating that certain technical elements are present. Exceptionally, however, the subject-matter may be restricted using a disclaimer - a negative limitation, expressly stating that particular features are absent.  This tactic may be used, for example, to delimit a claim to a general class of substances from prior art disclosing a member of that class.

In the present case, the claim relates to a class of catalytic nucleic acid molecules.  Disclaimers were introduced into the claim, by amendment, expressly stating that particular molecules within the class are excluded. These excluded class members were, however, disclosed as embodiments of the invention in the patent application as filed.

During examination, the Examining Division of the EPO refused the application under Article 123(2) EPC (added subject matter), arguing that the application as filed included ‘neither an explicit nor an implicit basis for the disclaimers’. The Examining Division accepted, however, that the molecules excluded by the disclaimers were indeed disclosed as embodiments of the invention in the application as filed.

On appeal, the TBA have referred the following question to the EBA:-

‘Does a disclaimer infringe Art. 123(2) EPC if its subject-matter was disclosed as an embodiment of the invention in the application as filed?’

It was thought by many in the patents field that the EBA’s previous decisions G1/03 and G2/03 exhaustively codified the rules on the use of disclaimers. According to these decisions, a disclaimer may be allowable in order to:

1. restore novelty by delimiting a claim against state of the art under  Art. 54(3) and (4) EPC (novelty-only prior art);
 
2. restore novelty by delimiting a claim against an ‘accidental   anticipation' under Art. 54(2) EPC; and,

3. disclaim subject-matter which, under Arts 52 to 57 EPC, is excluded   from patentability for non-technical reasons.

Recently, however, the TBA carefully argued (in T1107/06) that G1/03 and G2/03 codified the use of disclaimers only under particular circumstances. Specifically, the TBA argued that G1/03 and G2/03 only related to situations where the subject-matter disclaimed is not disclosed in the application as filed. In cases where the subject-matter disclaimed is disclosed in the application as filed, the TBA considered that the decisive question regarding Art. 123(2) EPC is ‘not whether the skilled person could infer from the original disclosure that the applicant intended to exclude the subject-matter of the disclaimer from the scope of protection. Rather it has to be ascertained whether there is a clear and unambiguous disclosure of the subject-matter remaining in the claim’. Accordingly, the TBA chose not follow a restrictive approach to disclaimer use and supported the view that subject-matter disclosed as an embodiment of the invention could, in principle, be disclaimed.

It remains to be seen whether or not the EBA in the present case will choose to follow the findings of the TBA in T1107/06.  Should the EBA decide otherwise, it will be very interesting to see their reasoning.

Andrew Mears - Electronics, Computing & Physics Group
Nicholas Jones - Life Sciences & Chemistry Group