Wednesday, 4 November 2009

T 8/07 - ‘Should’ Means ‘Must’

The present decision deals with the attempt to get around G 1/03 by taking advantage of the ambiguous wording of one of its conclusions. Well, the attempt was unsuccessful, but it was well worth a try.

[...] In part 3 of the reasons of G 1/03, entitled “The drafting of disclaimers”, it is held, with reference to the purpose of disclaimers in particular with respect to the exclusion of a novelty destroying disclosure that: “The necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily. Therefore the disclaimer should not remove more than is necessary to restore novelty or to disclaim subject matter excluded from patentability for non-technical reasons”. The second sentence of this passage is reproduced in headnote 2.2, to which reference was made by the appellant in the statement of grounds of appeal. [2.3]

These findings of G 1/03, when read in their correct context, therefore express a requirement and not merely a desideratum. In particular it cannot be derived from this part of the reasoning of G 1/03 - as the appellant argued in writing and orally - that a patent proprietor is permitted a degree of discretion or latitude concerning the “border” within which the disclaimer should be drafted with respect to the subject matter to be excised. On the contrary, the existence of any discretion regarding the extent of the disclaimer as compared to the subject-matter to be excluded would inevitably introduce a degree of arbitrariness in the drafting of the disclaimer. This would however conflict with the express findings of G 1/03 as explained above. [2.4]

It is therefore concluded that in order to comply with the requirements following from G 1/03 with respect to the drafting of disclaimers it is necessary that these be formulated to excise only that subject- matter which cannot be claimed, e.g. in the present case the disclosure of an example of the prior art. [2.5]

This decision had already been discussed here (in French).

To read the whole decision, click here.