This decision, which I discussed in my previous post, also contains a noteworthy paragraph on the rare situation where subject-matter is both disclaimed in the application, and described as being within the scope of the claim.
The patentee had filed an auxiliary request containing a disclaimer (“said drug not being cyclosporin”). It argued that this disclaimer was disclosed in the application.
The patentee had filed an auxiliary request containing a disclaimer (“said drug not being cyclosporin”). It argued that this disclaimer was disclosed in the application.
[…] The paragraph bridging pages 29 and 30 of the original application cites example 2a of D1 and concludes with the statement: “Nonetheless, no claim is made herein to a pharmaceutical composition which comprises cyclosporine”.
On the other hand, the passage on pages 21-25 contains a list of hydrophobic drugs which may be formulated in accordance with the present invention. This list cites cyclosporin among the anti-neoplastic agents and immunosuppressants.
In the opinion of the board, there is only one way of logically reconciling these two seemingly contradictory passages: the original application intends to disclaim compositions comprising cyclosporin as such, but does not intend to disclaim any use related to cyclosporin or to compositions comprising cyclosporin. As the disclaimer in present claim 1 is not directed to the exclusion of a composition as such, it is not based on the application as originally filed.
The only alternative way of interpreting these two passages would be to simply state that they are contradictory, in which case the original application would not provide a clear and unambiguous disclosure for the disclaimer either. [3.1]
I first thought that the applicant had introduced the contradiction by filing an amended text in the PCT application, after having become aware of a document that destroyed the novelty of the subject-matter claimed in the priority application. However, this is not what had happened: the sentence disclaiming cyclosporine is already there in the GB priority document. So the true explanation for the contradiction might be somewhat less sophisticated: Shit happens.
To read the whole decision, click here.
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