G 2/10 – Test The Rest

In its interlocutory decision T 1068/07 of 25 June 2010, Board 3.3.08 referred the following question to the Enlarged Board of Appeal (EBA):

Does a disclaimer infringe A 123(2) if its subject-matter was disclosed as an embodiment of the invention in the application as filed?

Now this is not an easy one. What did the EBA have to say? Well, we have got the answer yesterday. Enjoy!

Admissibility of the referral

[1] In decision G 1/07 [4.2.3] the EBA pointed out that it was aware that, subsequent to decisions G 1/03 and G 2/03 different opinions have been expressed in the jurisprudence of the boards of appeal on whether decisions G 1/03 and G 2/03 relate to the disclaiming of embodiments which are disclosed as part of the invention in the application as filed or whether in that situation the jurisprudence as previously established following decision T 4/80 continues to apply. Reference was made by the EBA to decision T 1107/06 [31. et seq.], and the decisions cited therein.

In spite of the somewhat broad wording of the referred question, which asks generally whether disclaiming an embodiment disclosed in the application as filed as an embodiment of the invention infringes A 123(2), it is to be understood from points [15] and [16] of the referring decision that the referral was made mainly, if not exclusively, in order that the divergence of views identified in decisions T 1107/06 and G 1/07 could be clarified.

There is, furthermore, a divergence of views in the jurisprudence of the boards of appeal not only with regard to the question of what the EBA actually decided in decision G 1/03 but also with respect to the question of what the right solution to the question ought to be. Is it the application of the criteria set out in decision G 1/03 or should the relevant test be whether the subject-matter remaining in the claim after the introduction of the disclaimer was disclosed in the application as filed, as was held in decision T 1107/06?

This question is indisputably also a point of law of fundamental importance within the meaning of A 112(1) and, since the question of compliance with A 123(2) is normally examined before substantive examination, the referral is admissible (see G 1/03 [1.2]).

The construction of the referred question

Disclaimer infringing A 123(2)?

[2.1] The referring Board has asked whether a disclaimer infringes A 123(2) if its subject-matter was disclosed as an embodiment of the invention in the application as filed. However, since A 123(2) deals with amendments and since the disclaimer as such defines subject-matter that is not claimed, the question is construed as intended to ask whether an amendment to a claim by the introduction of a disclaimer infringes A 123(2) if the subject-matter of the disclaimer was disclosed as an embodiment of the invention in the application as filed.

The term “disclaimer”

[2.2] In decision G 1/03 [2] the EBA gave a definition of the term “disclaimer”, which states that in accordance with consistent practice, the term “disclaimer” is used in the decision as meaning an amendment to a claim resulting in the incorporation therein of a “negative” technical feature, typically excluding from a general feature specific embodiments or areas. This is the understanding of the term “disclaimer” on which the present decision is also based.

The term “embodiment”

[2.3] The referring Board has drafted the question of the infringement of A 123(2) on the basis that the disclaimed subject-matter is an “embodiment” of the invention. The term “embodiment” is commonly used to define a specific combination of features or a specific mode of carrying out the invention, by contrast to a more abstract definition of features which can be carried out in more than one way.

As regards disclaimers, it is, however, not generally so that only one specific embodiment is excluded from protection. On the contrary, disclaimers are often defined in much broader terms. The disclaimers then - at least potentially - exclude a plurality of embodiments, a whole (sub)group thereof or a whole, even if limited, area falling within the ambit of a generic claim. In this respect, the EBA notes that e.g. in claim 1 of auxiliary request III all catalytic molecules are excluded from protection which show site-specific intermolecular catalytic cleavage of the substrate corresponding to a defined portion of sequence ID number 135 under defined conditions.

The main problem of the compatibility of disclosed disclaimers with A 123(2) does not lie in one specific “embodiment” of an invention being disclaimed from a broad generic claim. Rather, it arises in those cases in which a whole area or subclass is disclaimed. It is cases of this kind that have given rise to doubts whether, after the introduction of such a broad disclaimer, the subject-matter remaining in the claim is still the same as that formerly claimed, and have prompted the idea that, when the requirements of A 123(2) are examined, the nature of the subject-matter remaining in the claim must be assessed. It appears immediately evident that the nature of the question differs according to whether only one specific embodiment is disclaimed from a generally drafted claim, or whether, on the other hand, a whole subgroup or area is disclaimed.

In decision G 1/03 [2.1.3], the EBA defines the possible contents of a disclaimer in a much broader sense than by referring to the exclusion of an embodiment. In the context of explaining why, for the purpose of delimiting the claimed-subject matter with respect to a conflicting application, a disclaimer is not in contradiction to A 123(2), the EBA speaks very generally of “an invention comprising “different specific embodiments or groups thereof” having been disclosed in the application as filed, a “part of which” is excluded from the requested protection. There is no definition of a degree of narrowness required from the part to be excluded in order to be the potential subject-matter of a disclaimer.

This explains the broad wording of answer 1 in decision G 1/03, which does not use a narrow term such as “embodiment”. Instead, it answers the referred question generally, with respect to “subject-matter” excluded by the disclaimer, in correspondence to the terminology used in question 1 of referring decision T 507/99.

For these reasons, the use of the term “embodiment” in the referred question cannot be a reason for construing the question too narrowly. All - and in particular the critical - uses of disclaimers, i.e. disclaimers excluding whole (sub)groups of embodiments or areas from the claimed subject-matter need to be considered in order to deal with the referred question in an appropriate way. As a consequence, the EBA holds that the term “embodiment” in the referred question should be understood as addressing the issue of disclaiming “subject-matter”. This term will figure in the EBA’s answer.

Did G 1/03 decide the issue of disclaimers disclaiming subject-matter
disclosed in the application as filed?

[3] In the decisions of technical boards of appeal cited in decision T 1107/06 [42], the expression “disclaimer which is not disclosed in the application as filed” in answer 2 of decision G 1/03 has been read as meaning that the criteria set out in answer 2 were meant to apply to all cases in which the disclaimer as such was not disclosed in the application as filed and hence also to cases in which, albeit the disclaimer not being disclosed as such, its subject-matter was disclosed in the application as filed.

Such a reading of decision G 1/03 is incorrect, for the following reasons:

[3.1] It is particularly clear from question 1 of the first referring decision, T 507/99 [Headnote], that that referral was only directed to the situation in which neither the disclaimer nor the subject-matter excluded by it from the scope of the claim has a basis in the application as filed. Question 1 sets out this condition explicitly, the referring Board having ascertained in point [3] of the Reasons that in the case under consideration neither the disclaimers as such nor the excluded subject-matter had been disclosed in the application as filed.

The second referring decision, T 451/99, uses the term “disclaimer not supported by the application as filed” in the first referred question, but it is clear, in particular from points [4] and [24] of the Reasons, that by using this term the referring Board was - also - addressing a situation in which neither the disclaimer as such nor the excluded subject-matter was disclosed in the application as filed.

[3.2] In spite of some differences in wording, in both referring decisions the further questions asking the EBA to define the criteria to be applied in assessing the admissibility of a disclaimer, refer back to the respective first question put. In both decisions, the further questions were put to the EBA only for the event that the EBA did not answer question 1 by saying that an amendment to a claim by the introduction of a disclaimer is unallowable under A 123(2) for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim has a basis in the application as filed (i.e. is supported by the application as filed, in the terminology of T 451/99).

[3.3] The EBA’s answers follow exactly the structure of the referred questions. They start by giving the basic principle in answer 1. It is expressly stated therein that the answer relates to the case in which neither the disclaimer nor the subject-matter excluded by it from the scope of the claim has a basis in the application as filed. Answer 2 and its sub-answers then address the further referred questions and define in more detail the criteria to be applied for assessing the allowability of such a disclaimer.

In this respect also following the structure of the referred questions, answer 1 is, however, only drafted in negative terms by giving the reason for which an amendment may not be refused under A 123(2) (i.e. not for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim has a basis in the application as filed). It is, hence, clear that answer 1 only partly dealt with the referred questions and that further answers were required to settle them.

In such a situation, where an answer completes another answer in order to settle the questions posed, the questions all being defined by a particular set of circumstances (here the fact that neither the disclaimer nor the subject-matter excluded by it has a basis in the application as filed), such further answer cannot be taken out of context or read in isolation. Just as for the further referred questions (see in this respect in particular decision T 507/99), answer 2 refers back to and further elucidates the criteria to be applied in the context of the basic answer given in answer 1. When read in the context of answer 1, it appears that the term “disclaimer which is not disclosed in the application as filed” used in answer 2 is the term linking this answer to answer 1. It may be that this passage of answer 2 could have been worded by repeating verbatim the corresponding formulation in answer 1. However, it can nevertheless be deduced clearly from the above-described structure of the answers - which corresponds to the structure of the referred questions - that the EBA’s answer to subsidiary question 2 refers to the situation addressed in answer 1, i.e. to the situation in which neither the disclaimer nor the subject-matter excluded by it have a basis in the application as filed. In the Reasons of decision G 1/03 that situation is later referred to by the use of the term “undisclosed disclaimer” (see e.g. [2.1] of the Reasons), and in the present case the same terminology will be used.

Hence, the controversial passage in answer 2 cannot be read to mean that the EBA intended to decide that a case not addressed by the referred questions, i.e. the situation in which the subject-matter excluded by the disclaimer is disclosed in the application as filed, was a case to which the criteria set up in answer 2 were to be applied.

[3.4] In the absence of indications to the contrary, it can be presumed that the EBA would have clearly stated so if it had intended to give answer 2 a meaning going beyond the scope of the questions posed. Nor is there anything in the further text of decision G 1/03 which indicates that the EBA envisaged that the requirements for the allowability of disclaimers, as set out in answer 2, should apply to the disclaiming of subject-matter disclosed in the application as filed.

[3.5] G 1/03 [2.5] does not support the conclusion drawn from that passage by the technical board in decision T 1050/99 [6] and [7.(d)], that G 1/03 also relates to disclaimers for disclosed subject-matter. In G 1/03 [2.5] the EBA generally addresses the question as to whether, if a claim comprises non-working embodiments, such embodiments may be disclaimed. It is nowhere mentioned that, although the object of the said decision was disclaimers for subject-matter which was not disclosed in the application as filed, the discussion in point [2.5] of the Reasons relates to the situation in which the non-working embodiments are disclosed in the application as filed. The fact that the two decisions cited by the EBA in this context, i.e. T 170/87 [8.4] and T 313/86, referred to in decision T 170/87, addressed the question of disclaimers in the absence of disclosure of the subject-matter to be excluded in the application as filed, also points away from the interpretation of that passage in the sense advocated in decision T 1050/99.

[3.6] Furthermore, as the appellant’s representative has pointed out, the requirement laid down by the EBA in G 1/03 [3] for drafting a disclaimer, i.e. that “the disclaimer should not remove more than is necessary to restore novelty …” is not suitable for the disclaiming of disclosed subject-matter, since in that case the wording of the disclaimer must be configured in accordance with the disclosure of the disclaimed subject-matter in the application as filed.

[3.7] In G 1/03 [2], the EBA explains why it uses the term “undisclosed” disclaimer instead of the term “unsupported” disclaimer, which had been used in referring decision T 451/99 for the situation in which neither the disclaimer as such nor the disclaimed embodiments were disclosed in the application as filed. As is apparent from the EBA’s explanations, the only reason for the change in terminology adopted by it was to avoid any confusion between the requirements of A 123(2) and those of A 84, which uses the term “supported”.

[3.8] For the EBA it is furthermore an important element in arriving at this conclusion that national decisions have taken the same stance and read decision G 1/03  in the same way (“Napp Pharmaceutical Holdings Ltd v. Ratiopharm GmbH and Sandoz Ltd”, Court of Appeal (England and Wales), [2009] EWCA Civ 252, point 82. et seq. of the Reasons, with reference to T 1139/00; “Mundipharma Pharmaceuticals B.V. v. Sandoz B.V.”, District Court of The Hague of 7 April 2010, case no. 340373/09-2029, point 4.11 et seq. of the Reasons). This has been made particularly explicit in the above cited decision of the District Court of the Hague, in which the Court sets out in a very comprehensive and convincing reasoning, which is analogous to the EBA’s reasoning in the present decision, why it comes to the conclusion that decision G 1/03 only relates to the situations in which “neither for the disclaimer nor for the subject-matter of the disclaimer (i.e. that which is excluded) a basis can be found in the original application” (loc.cit., translation into English on file).

[3.9] To conclude, it cannot be said that answer 2 of decision G 1/03 relates to the disclaiming of subject-matter disclosed as part of the invention in the application as filed.

Does an amendment to a claim by the introduction of a disclaimer
disclaiming subject-matter disclosed in the application as filed infringe A 123(2)?

The scope of the referred question

[4.1] In point [15] of the Reasons of the referring decision the referring Board defines the purpose of the referral as being to clarify the controversial issue of whether the conditions set out in decision G 1/03 apply to the disclaiming of disclosed subject-matter or whether the relevant test should be whether the subject-matter remaining in the claim after the introduction of the disclaimer is disclosed in the application as filed […]. It is clear, however, that when considering and deciding the referred question, which has been drafted in a broader manner, the EBA cannot in any way be confined to deciding only on these two opposed alternative interpretations adopted by the boards of appeal. On the contrary, even though the EBA will consider what has been said on the matter in prior decisions, it is the EBA’s role to define of its own motion the criteria determining when disclaiming disclosed subject-matter must be considered to infringe A 123(2).

The text of A 123(2)

[4.2] A 123(2) reads:

“(2) The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.”

The basic principle underlying A 123(2), in the jurisprudence of the Enlarged Board

[4.3] The importance and the applicability, without exception, of A 123(2) was underlined in the jurisprudence of the EBA as early as in its opinion G 3/89 and decision G 11/91, relating to amendments by way of correction. From these rulings it follows that any amendment to the parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in A 123(2) and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed, points [1], [1.3] and [3] of the Reasons.

These findings were in principle confirmed in decision G 1/93 [answer 1, first sentence] with respect to the ground of opposition under A 100(c) and, on a more general level, in decision G 2/98, dealing with the requirement of the “same invention” under A 87(1). In that decision the EBA also relied on a disclosure test for determining whether the later application is for the same invention as the priority application and made explicit reference to the disclosure test applied under A 123(2) (answer, see also point [1] and [9] of the Reasons).

In decision G 1/93, concerned with the relationship between paragraphs 2 and 3 of A 123 in the situation of the patentee being caught in a so-called “inescapable trap”, the EBA stated with respect to the argument advanced of there being a mutual relationship between paragraphs 2 and 3 of A 123, the one to be applied as primary and the other as subsidiary depending on the facts of the individual case:

“This interpretation is not in line with the mandatory character of A 123(2), as explained by the EBA in its opinion in case G 3/89 (OJ EPO 1993, 117)” (point [13] of the Reasons).

In decision G 1/93 [16] the EBA however conceded that, where an undisclosed limiting feature - without providing a technical contribution to the subject-matter of the claimed invention - merely excludes protection for part of the subject-matter of the claimed invention as covered by the application as filed, the adding of such a feature cannot reasonably be considered to give any unwarranted advantage to the applicant and is, on a proper interpretation of A 123(2), therefore not to be considered as subject-matter extending beyond the content of the application as filed within the meaning of that provision.

It is, however, evident from the context of these findings that by introducing the “technical contribution” criterion the EBA did not intend to amend the definition concerning when an amendment is allowable under A 123(2) generally, but that it only sought a way of avoiding the potentially fatal consequences of the patentee being caught in the “inescapable trap” between the requirements of paragraphs (2) and (3) of A 123 (see point [13] of the Reasons).

Although the general principle expressed in that decision, namely that the purpose of A 123(2) is to avoid the applicant obtaining an unwarranted advantage by means of an amendment, is often cited and has also been relied on in later decisions of the EBA as being the purpose underlying A 123(2), such later decisions have also made clear that the issue in question in decision G 1/93 related to the conflicting requirements of A 123(2) and (3) and “hence, dealt with a completely different legal situation”. This is how the EBA put it in its decision G 2/98 [10], in which decision the disclosure test of G 3/89 was applied to the concept of the same invention.

Decision G 1/03 [2, penultimate paragraph], also starts from the premise that decision G 1/93 was concerned with the relationship between paragraphs (2) and (3) of A 123. After having addressed the conflict identified in decision T 323/97 between decisions G 1/93 and G 2/98 with respect to the question of whether it matters that an added feature provides a technical contribution to the claimed subject-matter, the EBA refrains from taking any position but ends by saying: “The question answered in T 323/97 in the negative is examined below in relation to the different situations arising in the present proceedings” (point [2, last paragraph]).

It can thus be stated that neither decision G 1/93 nor decision G 1/03 intended to modify the general definition of the requirements of A 123(2) established in opinion G 3/89 and decision G 11/91, which definition has become the generally accepted, one could also say the “gold” standard, for assessing any amendment for its compliance with A 123(2). Therefore that definition also applies to the kind of cases underlying the present referral.

Is it to be derived from G 1/03 that the introduction of a disclaimer disclaiming disclosed subject-matter cannot a priori modify the subject-matter remaining in the claim and that it is therefore always allowable?

[4.4] Certain passages in this decision could be and indeed have been interpreted as expressing the EBA’s position that introducing a disclaimer could a priori not change the technical information in the application and therefore not modify the subject-matter remaining in the claim.

The decision

[4.4.1] In point [2.1.3] of the Reasons the EBA states after a detailed discussion of the legal history of A 54(3) (whole contents vs. prior claim approach) with respect to the question of a potential change of the content of technical information in the application by the introduction of a disclaimer:

“For the interpretation of A 123(2), it may be concluded from the foregoing […] that the purpose of a disclaimer excluding a conflicting application is merely to take account of the fact that different applicants are entitled to patents in respect of different aspects of inventive subject-matter and not to change the given technical teaching. The disclaimer splits the invention as a whole in two parts: […]

Such a disclaimer, only excluding subject-matter for legal reasons, is required to give effect to A 54(3) and has no bearing on the technical information in the application. It is, therefore, not in contradiction to A 123(2). […] An invention comprising different specific embodiments or groups thereof has been disclosed in the application as filed, a part of which is excluded from the requested protection, i.e. no longer claimed. The remaining subject-matter is not modified by the disclaimer. […]”

In point [2.2.1]} of the Reasons the EBA then states :

“The concept of accidental anticipation is akin to the situation of conflicting applications already discussed, starting from the premise that only novelty is at stake. In the case of an accidental anticipation, the exclusion of the unrelated state of the art is likewise not intended to contribute to the inventive merit of the technical teaching given.”

Meaning of that jurisprudence

[4.4.2] In order to assess correctly the statements cited in the foregoing, the context in which they were made as well as some further findings in this decision must be considered.

The context is first that in a preceding passage, in point [2], second paragraph of the Reasons, the EBA had already dealt with and refuted the argument that a disclaimer is a mere voluntary restriction by which the applicant abandons part of the claimed subject-matter and that, therefore, the disclaimer per se is not a technical feature of the claim, cannot violate A 123(2) and should always be allowed. The EBA replied by stating that any amendment to a claim is presumed to have a technical meaning, otherwise it would be useless to have it in the claim. Hence, it appears that the proposition that disclaiming subject-matter could per se not change the content of technical information in the application and could therefore per se not violate A 123(2), was not endorsed by the EBA.

As a consequence, it appears that the purpose of the example given in point [2.1.3] of the Reasons of an invention comprising different specific embodiments or groups thereof disclosed in the application as filed, a part of which is excluded from the requested protection, must be understood as giving a typical example in which the disclaimer does not normally change the teaching of the subject-matter remaining in the claim and does not normally add information. It cannot be read as meaning that the EBA wished to establish the principle that an amendment to a claim by the introduction of a disclaimer disclaiming a disclosed embodiment could per se not modify the subject-matter remaining in the claim and could therefore never violate A 123(2).

This is corroborated by the EBA’s findings in points [2.5.2] and [2.6.5] of the Reasons. In point [2.6.2] the EBA speaks of “the principle that an undisclosed limitation has to be a mere disclaimer in the above sense” to be allowable. What is meant thereby is then further explained in point 2.6.5 of the Reasons, in which the EBA states:

“[2.6.5] It results from the foregoing that a disclaimer may serve exclusively the purpose for which it is intended and nothing more. In the case of a disclaimer concerning conflicting applications, its purpose is to establish novelty with respect to a prior application in the sense of A 54(3). In the case of a disclaimer concerning state of the art under A 54(2), its purpose is to establish novelty vis-a-vis an accidental anticipation as defined in this decision. Finally, a disclaimer excluding subject-matter not eligible for patent protection may only serve the purpose of removing such specific legal obstacle. If a disclaimer has effects which go beyond its purpose as stated above, it is or becomes inadmissible.”

It is true that these findings, in particular the last cited sentence, are only embedded in the reasons for the decision and have not found their direct entrance into answer 2 in the order, setting out the criteria to be applied for assessing the allowability of an undisclosed disclaimer. That does not mean, however, that the above-cited findings were not made purposefully and need not be taken as meaning what is stated therein. The gist of the questions referred to the EBA in cases G 1/03 and G 2/03, on which the EBA had to give an answer, was to establish whether and, if so, under which circumstances undisclosed disclaimers could be considered allowable at all, as a matter of principle, despite the absence of a basis in the application as filed. It is this question and no more the EBA has answered in answer 2. The wording the EBA chose in the starting line of answer 2, reading “a disclaimer may be allowable” indicates that with the criteria set up in answer 2 the EBA did indeed not intend to give a complete definition of when a disclaimer violates A 123(2) and when it does not.

It is in this sense that the teaching of decision G 1/03 has also been interpreted first in decision T 1139/00 and then in the above-cited national decisions, also with respect to disclaimers for disclosed subject-matter.

In decision T 1139/00, the Board, after having stated in point [2.5] of the Reasons that the subject-matter excluded by the disclaimer in question is supported by the application as filed, gives an extensive technical reasoning in points [3] and [4] (bearing the heading “A 123(2)”) of the Reasons as to why the introduction of the disclaimer only limits the scope of protection “without providing any technical contribution to the invention as claimed” (point [3.1] of the Reasons), and why it only “leaves a more limited group” (point [4.1] of the Reasons, at the end). Thus, the Board did not consider A 123(2) as being automatically fulfilled as a consequence of the limitation having been performed by a disclaimer for disclosed subject-matter.

In the decision handed down by the Court of Appeal of England and Wales cited above Jacob LJ states in point [82] of the Reasons, making reference to decision T 1139/00:

“G 1/03 does not set up any further or more extensive rule than the basic rule that an undisclosed disclaimer is permissible as not adding matter provided it is a “mere disclaimer”.”

In point [83] of the Reasons he then goes on, again with reference to decision T 1139/00:

“So this TBA has held that G 1/03 is confined to novelty restoring or exclusion of unpatentable subject-matter disclaimers. It went on, rightly in our view, to address the real question: was there added subject-matter?”

And, in point [85] of the Reasons, by referring to the appealed decision:

“Floyd J was entirely right when he said: [122] Nevertheless, the test for added subject matter remains that set out in the Convention and the Act […].”

In the decision of the District Court of the Hague the Court also expressly endorses the finding in decision T 1139/00 that “the allowability of a “disclosed” disclaimer must be tested against A 123 paragraph 2 of the EPC” and that it is “conceivable that the technical teaching of the patent changes if subject matter is excluded, which subject matter had initially been included in positive terms […]” (points [4.14] and [4.15] of the Reasons).

The criteria to be applied

The disclosure test

[4.5.1] It is thus in accordance with the above-cited jurisprudence of the EBA and the national decisions that the principle that any amendment to an application or a patent, and in particular to a claim, must fulfil the requirements of A 123(2) also applies to an amendment limiting the claim by disclaiming disclosed subject-matter.

Therefore, as is the case for any other amendment, the test for an amendment to a claim by disclaiming subject-matter disclosed as part of the invention in the application as filed must be that after the amendment the skilled person may not be presented with new technical information. Hence, disclaiming subject-matter disclosed in the application as filed can also infringe A 123(2) if it results in the skilled person being presented with technical information which he would not derive directly and unambiguously, using common general knowledge, from the application as filed.

How is the original disclosure of the claimed subject-matter to be determined
with respect to a claim amended by the introduction of a disclaimer ?

[4.5.2] The critical question is how the original disclosure of the claimed subject-matter is to be determined in the case of the introduction into a claim of a disclaimer disclaiming disclosed subject-matter.

If a positive feature, which defines subject-matter that is actually claimed, is introduced into a claim, it can be examined whether the subject-matter of that feature was disclosed in the application as filed. With respect to the new combination of features which is claimed after the introduction of that feature, it can be examined whether that combination was disclosed in the application as filed.

By contrast, the technical subject-matter defined in the disclaimer does not make the disclaimed subject-matter as such a part of the definition of the claimed invention. A disclaimer does not as such define a feature of the claimed invention. It is just the opposite. It defines something that is not claimed. Hence, when it comes to determining whether, after the introduction of the disclaimer, the claim infringes A 123(2) or whether it is in conformity with it, this cannot be decided solely by establishing that the disclaimed subject-matter is disclosed in the application as filed.

Whether the skilled person is presented with new information depends on how he or she would understand the amended claim, i.e. the subject-matter remaining in the amended claim and on whether, using common general knowledge, he or she would regard that subject-matter as at least implicitly disclosed in the application as filed.

That statement corresponds to the definition given in A 123(2). Transposed to the presently discussed issue of an amendment to a claim, A 123(2) would read:

“The claim may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.”

Hence, it follows from the wording of A 123(2) itself that the point of reference for assessing an amended claim for its compatibility with A 123(2) is the subject-matter which the claim contains after the amendment. In other words, it is the subject-matter remaining in the claim after the amendment.

Rules of logic

[4.5.3] Whether that subject-matter was originally disclosed or not cannot be decided by following so-called rules of logic, in the sense that if an application discloses a general teaching and specific embodiments, groups thereof or areas, then all other potential embodiments, groups thereof or areas falling within the ambit of the general teaching (but not as such disclosed in the application as filed) would thereby, by implication, inevitably also be disclosed.

In this context it was also submitted that the disclosure of an embodiment or smaller region (B) within a broader region (A), likewise disclosed, would thereby logically and inevitably disclose the subject-matter of the broader region minus the embodiment (A-B) and that a claim containing such a disclaimer would for that reason not contain subject-matter offending against A 123(2).

Even if it may be said that there is not normally a problem with the original disclosure for the remaining subject-matter when originally disclosed specific embodiments, groups thereof or areas are disclaimed from the scope of a more general claim reflecting a more general teaching which has equally been disclosed, the question can nevertheless not be decided schematically.

In particular, no principle can be acknowledged, which would be applicable a priori, to the effect that disclaiming disclosed specific embodiments, groups thereof or areas from a broader claim can never infringe A 123(2).

Also, no so-called rule of logic applies, in the sense that where an application discloses a general teaching and specific embodiments, groups thereof or areas, all other potential embodiments or intermediate generalisations falling within the ambit of the general teaching (but not as such disclosed in the application as filed) would thereby, by implication, inevitably also be disclosed.

On the other hand, any schematic reasoning solely suggesting that the introduction of the disclaimer modifies the subject-matter remaining in the claim because that amended claim contains less than the unamended claim, would also not be sufficient to motivate an objection under A 123(2).

Need for technical assessment of the case under consideration

[4.5.4] Instead, what is required is an assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after the amendment.

The test to be applied is whether the skilled person would, using common general knowledge, regard the remaining claimed subject-matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed.

This test is the same as that applied when the allowability of a limitation of a claim by a positively defined feature is to be determined. In this respect a whole body of jurisprudence exists, in particular with respect to cases in which the limitation could lead to the singling out of compounds or sub-classes of compounds or other so-called intermediate generalisations not specifically mentioned nor implicitly disclosed in the application as filed (see Case Law of the Boards of Appeal of the EPO, sixth edition, July 2010, III.A.l. and 2.). The principles of that jurisprudence can and must be applied in the same manner to amendments of claims by disclaiming disclosed specific embodiments, groups thereof or areas as they apply to limitations performed by positively defined features. 

Where, for instance, as was said in decision G 1/03 [2.1.3], in the application as filed an invention has been disclosed and claimed in general terms and different specific embodiments or groups thereof have also been disclosed, and one of these is later excluded from the requested protection by the disclaimer, the remaining subject-matter, i.e. the remaining general teaching, will normally not be modified by the disclaimer. This contrasts with the situation in which, for instance, the disclaimer would have the effect of confining the subject-matter remaining in the claim to a subgroup of the originally claimed subject-matter, which subgroup could not be regarded as disclosed in the application as filed, even taking into account what the skilled person, using common general knowledge, would regard as implicit in the contents of the application as filed. In this case the amendment would contravene A 123(2).

By analogy with decision T 615/95, there would be added matter where the insertion of a disclaimer into a claim would result in singling out any hitherto not specifically mentioned or at least implicitly disclosed individual compound or group of compounds, or would lead to a particular meaning of the remaining claimed subject-matter which was not originally disclosed.

The relevance of the fact that the disclaimed subject-matter is disclosed as part of the invention

[4.5.5] Decision T 1102/00 and other decisions following the same approach have put forward as a reason for not allowing the disclaiming of subject-matter disclosed in the application as filed that that subject-matter was not presented in the application as filed as subject-matter to be excluded from protection, but on the contrary as part of the invention. That line of reasoning does not hold good.

It is in principle for the applicant to determine the scope of protection he desires by the manner in which he drafts his claims. There is no provision in the EPC which would oblige an applicant to seek, in the individual application under consideration, a protection corresponding to the broadest possibility offered by the disclosure of the application. Nor is there an obligation to draft claims in such a way as to include the preferred embodiment in their scope. To amend a claim in a way excluding disclosed subject-matter from it, in particular when by disclaiming a preferred embodiment, is at the applicant’s risk because it is clear that when it comes to determining whether the amended claim fulfils the remaining requirements of the EPC, such as support by the description (A 84), sufficiency of disclosure (A 83) and inventive step (A 56), the disclaimed subject-matter cannot be taken into account. In respect of inventive step the questions as to whether the problem has been solved over the whole breadth of the claim or whether an advantageous effect obtained by the remaining claimed subject-matter can be deduced from the application as filed may in particular become relevant.

With this proviso, i.e. subject to the claimed subject-matter fulfilling the requirements of the EPC, the applicant is free, i.e. he is entitled, not to claim protection for an embodiment or even a part of the disclosed invention. The applicant may, for example, be interested in obtaining a first quicker protection for a preferred embodiment and pursue the general teaching in a divisional application. Whether or not and, if so, under what circumstances, in such a case a disclaimer would be necessary in order to avoid the so-called prohibition on double protection is a different matter. It is sufficient to say that such procedural behaviour is not abusive and even legitimate. The amici curiae also mentioned other possible reasons not related to the requirements for patentability for splitting an application up into different applications for different embodiments, for instance for licensing purposes.

Taking it to the extreme, if the idea were correct that a disclosed embodiment of the invention could not be disclaimed because it was presented in the application as part of the invention, then as a result no limiting amendment of a claim would be possible at all, since even in the case of a limitation by positively defined features the situation is that through this limitation something is excluded from the claim which was previously presented as being part of the invention. If by contrast, an embodiment is presented in the application as filed as not being part of the invention, but e.g. as belonging to the state of the art or as a comparative example, then it cannot be claimed at all.

To conclude, no convincing reason has been advanced for not applying the principles developed in the context of A 123(2) for the assessment of amendments to claims by the introduction of positive limiting features in the same manner to limitations of claims by disclaimers which disclaim subject-matter disclosed in the application as filed.

Coherence of the approach with other issues relating to disc1osure

[4.6] Such an approach does not distort, but rather preserves, the structural relationship established in the EPC, based on the first-to-file system, between the provisions defining the state of the art and their impact on patentability, the substantive requirements for validly claiming a priority (concept of same invention) or for the filing of divisional applications and for the right to amend the application. It is vital that a uniform concept of disclosure is applied in all these respects and that the rights of an applicant are uniformly determined in all these contexts as extending to but at the same time as being limited to the disclosure made at the relevant point in time.

This was emphasised in decision G 2/98 [9], in which, in the context of determining the right to priority derivable from an application, the EBA endorsed a narrow or strict interpretation of the concept of “the same invention”, limiting the right to priority to subject-matter which the person skilled in the art can derive directly and unambiguously, using common general knowledge, from the previous application as a whole. In that decision the EBA also emphasised that any concept other than making the entitlement to priority dependent on the disclosure of the priority document could undermine patent protection for selection inventions, and held:

“Hence, such priority claims should not be acknowledged if the selection inventions in question are considered “novel” according to these criteria” (point [8.4] of the Reasons).

The same must apply to any amendment of an application under A 123(2). It may not create novel subject-matter.

The importance of applying a uniform concept of disclosure was again confirmed in decision G 1/03 [2.2.2], where the EBA emphasised that “the European Patent System must be consistent and the concept of disclosure must be the same for the purposes of A 54, A 87 and A 123”.

Accordingly, it appears that the approach, as adopted here with regard to the requirements to be met in order for amendments by the introduction of disclaimers for disclosed subject-matter to be allowable under A 123(2) does not lead to an unjustified result as compared with any of the above mentioned matters.

Nor does this approach impair an applicant’s right under A 76(1) to divide the application and split its subject-matter up into different applications, since according to A 76(1), second sentence, that right is in any case limited to the subject-matter which can be regarded as being disclosed in the earlier (the parent) application as filed (the “root” application in case of a sequence of divisional applications, see decisions G 1/05 and G 1/06). Therefore, if the subject-matter of a claim in a divisional application, in which an embodiment disclosed in the parent application is disclaimed, cannot be regarded as at least implicitly disclosed in the parent (or root application in the case of a sequence of divisional applications), because the disclaimer has the effect of confining the subject-matter remaining claimed in the divisional application to something which cannot be regarded as disclosed in the parent or root (as the case may be) application as filed, then there is no right to file a divisional application in respect of that subject-matter.

The same considerations govern the entitlement to the priority of an earlier application claimed in a later application in which a disclaimer is introduced disclaiming subject-matter disclosed in the priority application.

Finally, the same also applies under A 61(1)(b) if the entitled person files a new application and the original application must be confined to the subject-matter to which the original applicant remains entitled, As with any amendment, such an amendment is also subject to the requirements of A 123(2).

This means that where a limitation of the original application is made by introducing a disclaimer, this is only allowable to the extent that the subject-matter remaining in the claim after such limitation can be regarded as disclosed in the application as filed.

The president’s suggestion

[4.7] The President has suggested […] that where the subject-matter remaining in the claim is not directly and unambiguously derivable from the application as filed, the criteria established in decision G 1/03 should be applied regarding the allowability of the disclaimer.

The EBA fails to see any justification for adopting such an approach. As can be derived from the EBA’s position developed in the foregoing, in accordance with the principles developed in the above cited earlier rulings of the EBA, the overriding principle for any amendment to be allowable under A 123(2) is that the subject-matter of an amended claim must be at least implicitly disclosed to the skilled person, using common general knowledge, in the application as filed. As has also been set out in the foregoing that applies equally to the subject-matter of a claim the scope of which is determined by a disclaimer. Where this requirement is not fulfilled in the individual case under consideration because the effect of the disclaimer is to limit the claim to subject-matter, such as a subgroup, an intermediate generalisation or else, which cannot be regarded as disclosed in the application as filed, then there is no justification for granting a patent on such a claim. As has also been set out previously, any other view would undermine the legal system of the EPC based on the first-to-file principle and in particular the patentability of selection inventions.

In the oral proceedings before the EBA the representative of the President explained why the additional application of the criteria established in answer 2 of decision G 1/03 to the allowability of a disclaimer for disclosed subject-matter not having passed the remaining subject-matter test under A 123(2) had been suggested. This was because otherwise, in the case of a state of the art according to A 54(3), an applicant disclaiming disclosed subject-matter could be in a worse position than an applicant disclaiming subject-matter for which there was no disclosure in his application. This was so since according to decision G 1/03 in the latter case the applicant did not have to show that the subject-matter remaining in the claim after the introduction of the disclaimer was also disclosed as such in the application as filed.

The EBA does not hold this discrepancy to exist. It does not interpret decision G 1/03 to have intended, in its answer 2, to exhaustively determine the conditions under which, if fulfilled, an amendment by introduction of an undisclosed disclaimer was to be regarded as allowable under A 123(2) under all circumstances.

As has already been set out in point [4.4.2] above, the gist of the questions referred to the EBA in cases G 1/03 and G 2/03, to which the EBA had to give an answer, was to establish whether and, if so, under which circumstances undisclosed disclaimers could be considered allowable at all, as a matter of principle, despite the absence of a basis in the application as filed. It is this question and no more the EBA has answered in answer 2. The wording the EBA chose in the starting line of answer 2, reading “a disclaimer may be allowable”, indicates that with the criteria set up in answer 2 the EBA did indeed not intend to give a complete definition of when an undisclosed disclaimer violates A 123(2) and when it does not. Hence, in that decision it was not decided that, the requirements of answer 2 being fulfilled, an undisclosed disclaimer would be always allowable under A 123(2).

For these reasons it is decided that:

The question referred to the EBA is answered as follows:

1a. An amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed infringes A 123(2) if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.

1b. Determining whether or not that is the case requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after the amendment.

To download the whole decision, click here.

Laurent Tessèdre has given a nice summary (in French) here.