Monday, 2 November 2009

T 1212/07 - Disclaimers Disenchanted

When the Enlarged Board decided, in G 1/03, that disclaimers did not violate A 123(2), many practitioners were greatly relieved. Now is the time of disenchantment, as we discover that the rules provided by the Enlarged Board very often transform disclaimers into time bombs.

I shall dedicate most of this week's posts to decisions on disclaimers. 

The present decision contains an example for a disclaimer that is unallowable under G 1/03 because it excises too much. The patentee had  disclaimed the scope of the most relevant claim of the novelty destroying patent document. Alas, this was too much, as only one composition encompassed by this claim was novelty destroying.

[…] The amendments made to the claims of the requests comprise a disclaimer which excludes certain non-fluorinated layers. [2.1]

This disclaimer has no basis in the application as filed and was introduced into these claims during the opposition proceedings in order to delimit the claims against the disclosure of D1, a document undisputedly forming part of the state of the art only according to A 54(3) and (4) EPC 1973. [2.2]

According to decision G 1/03, an originally undisclosed disclaimer may be allowable and is considered as not extending the subject-matter of the application as filed within the meaning of A 123(2) if it restores novelty by delimiting a claim against state of the art under A 54(3). However, the disclaimer should not remove more than is necessary to restore novelty [2.3]

In the present case, the disclaimer is based essentially on the disclosure of Claim 29 of D1. However, the fluoropolymer layer (B) of this claim does not anticipate the much narrower fluoropolymer definition of the patent, which is limited to polymers comprising units derived from “one or more of hexafluoropropylene and tetrafluoroethylene monomers” and “one or more non-fluorinated olefinically unsaturated monomer(s)” without units of “vinylidene fluoride”. The only fluoropolymer composition of document D1 falling under the definition of the patent is the “copolymer of tetrafluoroethylene and ethylene”. The disclaimer thus removes subject-matter which does not anticipate the subject-matter of the present claims in the absence of the disclaimer. It thus inevitably removes more than is necessary to restore novelty vis-à-vis D1 and hence, does not amount to an allowable disclaimer. [2.4]

The Board cannot accept the argument of the Respondent that the disclaimer should be allowed in view of the fact that according to the disclosure of D1 the copolymers of tetrafluoroethylene and ethylene are only preferred fluoropolymers because this issue has no bearing on the relevance of the respective disclosures, which is a matter to be judged independently.

Just as unconvincing is the further argument of the Respondent that the disclaimer should not be attacked in appeal because it was not objected to during the opposition proceedings. The fact that the Appellant did not object to the allowability of the disclaimer before the Opposition Division neither amounts to a surrender of the right to object nor has any legal effect as to the allowability of the disclaimer. Whether the disclaimer is allowable or not is a legal requirement and the very purpose of appeal proceedings is to check the correctness of conclusions drawn by the department of first instance in the decision which is now challenged by the Appellant. [2.5]

For these reasons the introduction of the disclaimer extends the subject-matter claimed beyond the content of the application as filed, contrary to the requirements of A 123(2), with the consequence that the requests are not allowable. [2.6]

To read the whole decision, click here.