At the highest level of the EPO, the Enlarged Board of Appeal continues to deliver EPO binding decisions on technical and legal issues. For those of you interested in the ever relevant matter of disclaimers at the EPO, here’s the latest news, in the form of Decision G 1/16.
To the relief of Applicants and Patentees, the Enlarged Board has taken a pragmatic view and European patent practice should be more consistent in light of this Decision.
The question at hand in G 1/16 concerns the allowability of undisclosed disclaimers. An ‘undisclosed disclaimer’ is a negative claim amendment that is not based on any “negative” language in the application as originally filed. Previous landmark Decision G 1/03 laid down the original criteria required for an undisclosed disclaimer to be allowable, and since then, the use of undisclosed disclaimers has been a popular mechanism for establishing patentability, particularly in the field of life sciences.
Subsequently, Decision G 2/10 was issued, also relating to disclaimers. In this case, it was held that for a disclosed disclaimer to be allowable under the strict EPO added matter requirements, a ‘gold standard test’ must be met. According to this test, it has to be assessed whether the subject-matter remaining in the claim after the introduction of the disclaimer complies with the added matter requirements of the EPO in the sense that it has been explicitly or implicitly, and directly and unambiguously, disclosed in the application as filed.
Applying this gold standard disclosure test of G 2/10, when assessing an undisclosed disclaimer in a claim under the added matter requirements at the EPO, leaves virtually no chance of an undisclosed disclaimer being allowable.
Since G 1/03 and G 2/10 appeared to be incompatible, the following questions were referred to the Enlarged Board of Appeal under G1/16:
- 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?
- 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?
- 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 gold standard, may this standard be modified in view of these exceptions?
The Enlarged Board has considered these questions and has found that undisclosed disclaimers and disclosed disclaimers should be treated separately, using different tests. Therefore, for undisclosed disclaimers, the tests for allowability laid down in G 1/03 should be considered. For disclosed disclaimers, the test to apply for allowability is the gold standard disclosure test of G 2/10.
We expect that this latest Decision will mean greater consistency at the EPO in relation to claims in prosecution and oppositions which include negative disclaimers. For important cases (of yours or your competitors!), you may wish to consider whether this Decision can be used to place you at a more competitive advantage.
If you would like any further information, please contact Victoria Barker or your usual Kilburn & Strode advisor.