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Undisclosed disclaimers update

1 November 2016

When it comes to amending the scope of protection of your claims, the European Patent Office applies very strict requirements that any new scope of protection sought must have already been directly and unambiguously disclosed somewhere in the application as filed.

There is one exception to this rule, undisclosed disclaimers.  They are ‘undisclosed’ because the new scope of protection does not need to have been clearly disclosed in the application as filed, and ‘disclaimers’ because they remove specific features from the overall scope of protection.  However, such disclaimers are only allowable for restoring patentability of a claim where patentability has been compromised by any of the following.

·    Novelty is compromised by another European patent application that was filed earlier than, but not published until after, your application.
·    Novelty is compromised by an accidental anticipation from a document in an unrelated technical field.
·    Patentability is compromised because some of the claimed subject matter strays into the realms of excluded subject matter.

One of the EPO’s Technical Boards of Appeal, in decision T 0437/14, considers that even undisclosed disclaimers should not be allowed, and has referred this as a question to the Enlarged Board of Appeal, the EPO’s highest board of appeal.

Loss of undisclosed disclaimers would limit the options available to any applicant facing the situations above.  We remain optimistic that the Enlarged Board will not agree with the Technical Board but, in any event, we will be keeping a watch on this case as it is reviewed by the Enlarged Board.

Andrew Evitt
Life Sciences & Chemistry group

If you require further information on anything covered in this briefing, please contact Andrew Evitt (; +44 1179 253 030) or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Withers & Rogers LLP, November 2016