I may be wrong but I think there is some tension between G 1/03 and G 2/10. So I am very interested in cases such as the present one where the Boards examine compliance with both decisions.
Claim 1 of the main request on file read:
Method for isolating essentially pure group 1, 2, 3, 10 and 13 grass allergens, characterised in that an aqueous extract of Graminae pollen other than Phleum pratense is prepared, and the soluble constituents are subjected to hydrophobic interaction chromatography, a gel filtration step and, if desired, cation exchanger chromatography. (my emphasis)
In what follows, Board 3.3.04 examines compliance with A 123(2):
*** Translation of the German original ***
Substantial law
[2] The Board notes that the present main request is based on the first auxiliary request which had been filed during the oral proceedings before the Opposition Division (OD) on February 7, 2008. This request differs from the claims as granted in that a disclaimer (“other than Phleum pratense” (“ausgenommen Phleum pratense”)) has been introduced into claim 1 and in that a new claim 8 has been added, which claim describes a three-step method for isolating grass allergens without the use of a disclaimer.
A 123(2)
[3] The Board notes that neither the OD nor [the opponent] have raised the objection of inadmissible extension against the claims of the main request. The Board does not see any reason for reaching a different conclusion because the introduction of the disclaimer into claim 1 and the addition of claim 8 comply with the requirements of A 123(2) and the decisions G 1/03 and G 2/10. In claim 1 the disclaimer (“other than Phleum pratense”) serves the purpose of delimiting the subject-matter with respect to D8, which is state of the art pursuant to A 54(3)(4) EPC 1973. This document discloses an identical two-step method for isolating allergens from Phleum pratense (Timothy-grass), consisting of a hydrophobic interaction chromatography (HIC) and a gel filtration step […]. According to decision G 1/03 the introduction of a disclaimer that has not been disclosed in the application as filed can be allowable if it delimits a claim with respect to a state of the art pursuant to A 54(3)(4) EPC 1973, provided that the disclaimer does not exclude more than is necessary to re-establish novelty over this document and is clear and concise in order to comply with the requirements of A 84 (see decision G 1/03 [headnotes, 3]). The Board considers these requirements to have been complied with when the disclaimer “other than Phleum pratense” was introduced into claim 1. Therefore, the introduction of claim 8 is also admissible from the point of view of substantial law because it overcomes an objection of inadmissible extension and because a three-step method for isolating allergens from Graminae is not known from document D8, which means that there is no need to introduce a disclaimer for this method.
Moreover, decision G 2/10 requires the subject-matter remaining in the claim after the introduction of the disclaimer to be, explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed in order to satisfy the requirements of A 123(2) (see G 2/10 [headnote]). The application as filed discloses a purification method for isolating allergens from grass pollen, true grasses (Graminae) being particularly preferred […]. The family of true grasses comprises many grass types and is not limited to Phleum pratense, which was known to the skilled person on the priority date. For instance, in addition to Phleum pratense the description explicitly mentions pollen of the true grass types Lolium perenne, Dactylis glomerata, Festuca pratensis, Holcus lanatus, Poa pratensis, and Secale cereale as preferred raw material for purifying the claimed allergens […]. Thus claim 1 as amended by the introduction of the disclaimer still encompasses subject-matter allowing the invention to be carried out (der die Erfindung und ihre Ausführung ermöglicht). Moreover, the application does not provide any hint that the skilled person would have considered that the subject-matter remaining in the claim did not belong to the invention. From this the Board concludes that to the skilled person the subject-matter remaining in the claim was disclosed in the application as filed and that, as a consequence, the requirements of A 123(2) in the light of decisions G 1/03 and G 2/10 are satisfied.
Should you wish to download the whole decision (in German), just click here.
The file wrapper can be found here.
18 comments:
I agree with you. The way I understand G 2/10, the "subject-matter remaining in the claim" simply refers to the normal Art. 123(2) test to be applied in case of a disclaimer of disclosed subject-matter. The "subject-matter remaining in the claim" is precisely the subject-matter defined by the claim when taking into account the disclaimer. If this ("remaining") subject-matter is directly and unambiguously derivable, then clearly the claim complies with Art. 123(2) EPC.
The last paragraph you cited from this decision appears to apply a very different test (something like: would the skilled person have understood that the invention intended to encompass the remaining subject-matter). Imho this is clearly not the test prescribed by G 2/10. And in my view this "remaining subject-matter" test is not to be applied to the situation of undisclosed disclaimers that was the subject of G 1/03 and G 2/03 (but of course if the subject-matter defined by a claim is directly and unambiguously derivable from the application as filed, then Art. 123(2) is complied with and there is no need anymore to consider the criteria of G 1/03).
In my understanding, G 1/03 and G 2/03 define an exception to the regular Art. 123(2) test. G 2/10 states that this exception does not apply when the disclaimed subject-matter is disclosed in the application. If the disclaimed subject-matter is disclosed, then it is just the normal strict Art. 123(2) test that applies.
In my view, there is actually no real tension between G 1/03 and G 2/10, but unfortunately G 2/10, r. 4.7 is rather cryptic. Even more unfortunately, several decisions attempt to read a lot into r. 4.7 without referring the resulting messy complications back to the EBA.
Reading the last paragraph you cited again, I really have to wonder how the Board can start with the normal A.123(2) test whether the subject-matter of the claim is "explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed" and then end up with criteria such as "still encompasses subject-matter allowing the invention to be carried out" and "the application does not provide any hint that the skilled person would have considered that the subject-matter remaining in the claim did not belong to the invention". (And the problem does not seem to lie with your translation of the German.)
The practice seems to be that the check of whether the subject matter remaining in the claim fulfils A123(2) or not is to be done every time, irrespective of whether the disclaimer was disclosed in the original content or not. G1/03 sets some conditions under which an undisclosed disclaimed which would normally be rejected under A123(2) as an undisclosed feature can be accepted. The important issue is, however, whether the claimed subject matter - this what remains in the claim - complies with A123(2) or not.
If you have the OJ Special Edition 2013 regarding the 16th Symposium of European Patent Judges there is a speech of Ms Günzel (Chairwoman of the Legal Board) giving some explanations on the use of G1/03 and G2/10.
IMHO this is actually the test intented by G21/10 and there is no tension whatsoever between G1/03 and G2/10: These decisions provide two distinct tests for different purposes, although is some cases both tests apply simulataneously.
G1/03 deals with undisclosed disclaimers and its test is directed at the precise wording of the disclaimer. In this case: Can we introduce the wording "Phleum pratense"? (Yes: it's an Art. 54(3) situation.)
G2/10 applies to all disclaimers, disclosed or undisclosed and its test is directed at the remaining content of the claim, irrespective of wording. Here: Which Poaceae ("Gramineae" is deprecated) would the skilled person consider? (At least those listed in the application, so there is indeed something left after excluding P. praetense.)
This pair of tests may well become deadly in cases where the applicant has to disclaim his one and only embodiment, but that's not the result of a tension between the two tests.
G2/10 said that you had to do is look at what’s left in the claim to see if it the disclaimer is allowable. There wasn’t much advice as to how judge whether “what’s left” is allowable, but it did offer the following comments in paragraphs 2.3 and 4.5.3:
“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.”
“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”
In other words, the Enlarged Board of Appeal distinguished between (i) cases in which a specific embodiment of the invention was disclaimed (from a broad generic claim) (allowable) and (ii) cases in which a whole area or subclass was disclaimed (not allowable).
With respect to (ii), I thought that the Enlarged Board of Appeal was ruling out the possibility of using a disclaimer to effectively delete all embodiments so as to leave a single/specific embodiment (similar to T 615/95, which deletions from a list were considered allowable if they (1) do not result in singling out any hitherto not specifically mentioned individual compound or sub-class of compounds, but maintain the remaining subject-matter as a generic group of compounds differing from the original group only by its smaller size, and (2) do not generate another invention).
In my mind, this case would satisfy the criteria of T 615/95, because there are other species left after the disclaimer has been added, and should therefore be allowable.
However, it looks like the other Boards are taking a much stricter approach - see e.g. T 748/09
I am a bit puzzled about the Board applying both G 1/03 and G 2/10. G 1/03 appears to apply to undisclosed disclaimers, where neither the disclaimer nor the subject matter it disclaims was disclosed in the application as originally filed.
In the present case it appears that the disclaimed subject matter (Phleum pratense) appears to be part of the original disclosure, so G 1/03 would not apply (G 1/03, r. 3). G 2/10, on the other hand, appears to have been applied in a manner I understand it.
I sort of assumed that G2/10 intentionally provided a little bit of a fuzzy test to give flexibility in judging the issue on a case by case basis.
@Anonymous 4.9 16:12
P. pratense is disclosed in a postive manner, i.e. as a possible embodiment, not as an embodiment to be avoided, so the disclaimer "OTHER THAN P. pratense" is indeed undisclosed and G1/03 applies.
It there were any technical reason for the exclusion, it would be a new teaching and infringe Art. 123(2)!
ExaMinus,
G1/03 also deals with the SUBJECT-MATTER of a disclaimer. My understanding is that G1/03 should not apply as far as the SUBJECT-MATTER (P.pretense) is disclosed in the patent application.
@Manolis:
Several decisions indeed state that a claim must pass the test of G 2/10 whether we're in the case of G 1/03 or not.
However, in my view the test of G 2/10 is nothing more and nothing less than the regular Art. 123(2) test: is the claimed subject-matter directly and unambiguously derivable from the application as filed.
The word "remaining" is there because we are looking at a claim containing a disclaimer. The subject-matter of such a claim is the "remaining" subject-matter when you start with the subject-matter of the claim without the disclaimer and subtract the subject-matter disclaimed. This terminology was also used e.g. in T 1107/06:
"45. The board therefore considers that the decisive question to ask in the present circumstances under Article 123(2) EPC is not whether the skilled person could infer from the original disclosure that the applicant intended to exclude the subject-matter of the disclaimer from the scope of protection. Rather it has to be ascertained whether there is a clear and unambiguous disclosure of the subject-matter remaining in the claim. Applying the established yardstick to be used in the framework of Article 123(2) EPC, such disclosure may be explicit or implicit. Implicit disclosure includes what any person skilled in the art would consider necessarily implied by the patent application as a whole (see T 860/00 of 28 September 2004, point 1.1)."
G 2/10 essentially confirmed point 45 of T 1107/06 (but then disagreed with point 46). It is clear that point 45 is merely reformulating the regular strict Art. 123(2) test ("the established yardstick to be used in the framework of Article 123(2) EPC").
See also G 2/10, points 4.5.1 and 4.5.2. Point 4.5.2 explains that applying the regular Art. 123(2) test to a claim containing a disclaimer requires one to look at the "remaining" subject-matter rather than the "excluded" subject-matter. But the exercise being performed is nothing else than the well-established strict test of Art. 123(2).
There can be no question that if the "remaining" subject-matter of a claim containing a disclaimer is disclosed in the application as filed, i.e. if the subject-matter of such a claim is disclosed in the application as filed, then Art. 123(2) is complied with.
If this test would have to be applied as well in situations governed by G 1/03, then there is no need anymore for G 1/03: if Art. 123(2) is already complied with we're done, no need to look if the conditions of G 1/03 are complied with as well. The point of G 1/03 was to allow, under certain conditions, claims containing disclaimers that would normally have to be refused under Art. 123(2). I find it extremely unlikely that G 2/10 intended to completely undo G 1/03.
At the end of her talk, Ms Günzel refers to decision T 2464/10 which, like T 2018/08, considers that G 2/10 must also be complied with in the situation of G 1/03. According to T 2464/10, G 2/10 developed a "further test". In my view this is incorrect. G 2/10 does not develop any "further test". G 2/10 only confirms the "established yard stick", the "gold standard". G 1/03 defined, and in my view still defines, an exception to this standard. Under the conditions of G 1/03, there is a legal fiction that the claim complies with Art. 123(2), even though in reality it does not. This explains how the discovery of prior art document can result in an infringement of Art. 123(2) of a claim that before the discovery complied with the conditions of G 1/03: due to the discovery the conditions of G 1/03 are not met anymore, and the legal fiction falls away. What is disclosed by the application as filed is of course not changed by the discovery of the document.
@Anonymous of 4 September, 12:11:
You are misreading point 2.3 of G 2/10. It is not giving advice as to what is allowable.
Point 2.3 simply explains that the questions referred to the Board, although referring to a "disclaimed embodiment", should be read as referring to "disclaimed subject-matter". See the heading of point 2: "The construction of the referred question".
Regarding point 4.5.3, you are leaving out the words "Even if it may be said that ..., the question can nevertheless not be decided schematically". Point 4.5.3 in fact stresses once more that the regular "gold standard" has to be applied to the subject-matter of the claim. There is no rule that disclaiming originally disclosed specific embodiments does not infringe Art. 123(2).
It seems indeed that in this case the subject-matter of the disclaimer is disclosed in the application as filed, so that G 1/03 should not have played a role (G 2/10, points 3-3.9 and see also point 4.7).
The present decision does not come as a surprise as there are already a few decisions in which the application of G 1/03 and G 2/10 is combined.
All those decisions make clear that first G 1/03 is to be applied în order to decide whether the undislosed disclaimer is allowable or not.
As a second step, what remains ought to be checked whether it complies with G 2/10. What is left out by the undisclosed disclaimer should not lead to new information to be derivable from the application as filed.
It is only if both successive tests are passed in a positive way that the disclaimer is then "fully" acceptable.
T 1870/08 First G 1/03 to decide upon prior art under Art 54(3), then G 2/10. Disclaimer OK overall.
T 2464/10 First G 1/03 to decide upon Art 53(a) resp 53(b), then G 2/10. Disclaimer OK overall.
T 748/09 First G 1/03 to decide upon prior art under Art 54(3), then G 2/10. Disclaimer not OK as it was not allowable under G 2/10, as there was new information to be found.
Decision T 2018/08 fits in nicely in the series.
One could say that in 3 cases out of 4 the successive tests under G 1/03 and G 2/10 led to a positive outcome for the applicant/proprietor, but it could well be going in a different direction as shown in T 748/09.
A very simple conclusion imposes itself: the successive application of G 1/03 and G 2/10 may well lead to the fact that it will be more and more difficult to insert undisclosed disclaimers, for whatever reason, as the danger is high that eventually, what remains in the application/patent will not be in accordance with G 2/10. May be the Enlarged Board of Appeal may have to intervene again.
The problem with saying that "it has to be ascertained whether there is a clear and unambiguous disclosure of the subject-matter remaining in the claim" is that it doesn't explain how to go about deciding whether this test has been satisfied. It could be applied extremely harshly. Indeed, it could be argued that there is never any basis for what's left if the disclaimer is based on a positive limitation. Moreover, it is not uncommon for EPO examiners to look for literal concordance between the description and the claims when deciding whether there is added matter.
Hence, my suggestion for to between (i) cases in which a specific embodiment of the invention was disclaimed (from a broad generic claim) (allowable) and (ii) cases in which a whole area or subclass was disclaimed (not allowable).
Although I would agree that there's no one-size-fits all rule with respect to disclaiming specific embodiments, the Enlarged Board did hint that it wanted the Boards to follow the jurisprudence that had been set out for positive limitations.
Paragraph 4.5.4 adds weight to the fact that the test in T 615/95 is a good test to follow (i.e. does the disclaimer leave a specific embodiment?):
"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 European Patent Office, sixth edition, July 2010, III.A.1. 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 (point 2.1.3 of the Reasons), 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 Article 123(2) EPC. 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."
See also paragraph 44 of T 1107/06.
Referring to Raoul's comment, I came to ask myself whether the EBA in G 2/10 intended to decide that G 1/03 and G 2/10 are to be applied in combination.
In G 2/10 the EBA seems to clearly conclude, that G 1/03 did not intend to address the issue of disclaiming disclosed subject matter. On the other hand, in the last paragraph of point 4.7 of G 2/10, the EBA seems to indicate that meeting the criteria of G 1/03 would automatically render an undisclosed disclaimer disclaiming undisclosed subject matter allowable. This suggests that the EBA in G 2/10 is not against applying the additional criteria of G 2/10 to undisclosed disclaimers disclaiming undisclosed subject matter.
But is there something in G 2/10 about applying the criteria of G 1/03 to undisclosed disclaimers disclaiming disclosed subject matter?
@Anonymous
This is getting seriously hairy! (And there are too many Anonymous in this conversation).
Myshkin's comment that G1/03 introduces an exception to the regular Art. 123(2) test by way of a legal fiction is enlightening.
Suppose that there was no Art. 54(3) document but that the applicant, for whatever reason, spontaneously introduced the amendment "other than P. pratense". Should this amendment be allowed?
In my opinion it should NOT: It contradicts the teaching of the application as originally filed by disclaiming what was taught as a possible embodiment, and thereby presents a new technical teaching.
But if the disclaimer is caused by an Art. 54(3) document, G1/03 creates a legal fiction which allows the amendment. Nevertheless, the ordinary requirements of Art. 123(2), embodied by G2/10, still apply to the claim as a whole.
The two successive tests serve two different purposes: G1/03 allows the disclaimer itself (just the disclaimer!), G2/10 allows the claim as a whole (regular Art. 123(2)).
@ExaMinus:
Suppose that there was no Art. 54(3) document but that the applicant, for whatever reason, spontaneously introduced the amendment "other than P. pratense". Should this amendment be allowed?
Outside the situation of G 1/03, the test to be applied is the regular Art. 123(2) test (G 2/10). Whether the amendment is allowable depends on whether the subject-matter of the resulting claim is directly and unambiguously derivable from the application as filed.
In my opinion it should NOT: It contradicts the teaching of the application as originally filed by disclaiming what was taught as a possible embodiment, and thereby presents a new technical teaching.
That the original application taught the disclaimed matter as a possible embodiment of the invention does not imply that it cannot be validly disclaimed. See G 2/10, point 4.5.5 of the reasons. (Of course it does not imply that it can be validly disclaimed, either.)
I'm not sure what you mean exactly with "G 1/03 allows the disclaimer itself" versus "G 2/10 allows the claim as a whole".
I do agree that G 1/03 is focussed on the disclaimer. It assumes a claim that complies with Art. 123(2) and states that, under certain conditions, a disclaimer can be added to this claim and that this is considered not to infringe Art. 123(2) (to which I add by way of legal fiction). In such a case the regular Art. 123(2) test (which is that of G 2/10) is not to be applied to the resulting claim.
On the other hand, if we are in a situation that could potentially fall under G 1/03, but the claim including the disclaimer already passes the regular Art. 123(2) test, then there is of course no need anymore to look at G 1/03. The claim already has no problem with Art. 123(2). (Note that if the claim including the disclaimer passes the regular Art. 123(2) test, there is no requirement that the claim without the disclaimer complies with Art. 123(2).)
So in a way we can apply both G 1/03 and G 2/10: if the claim including the disclaimer passes one of the tests, the claim is allowable under Art. 123(2), either by way of legal fiction (G 1/03), or because it really complies with the "gold standard" (G 2/10).
What does not make sense is to require that the claim passes BOTH tests. I know that several decision have already required this, but I maintain that this approach is logically flawed. The argument that should immediately convince is that if the subject-matter of "claim + disclaimer" is directly and unambigiously derivable from the application as filed (the test of G 2/10), then Art. 123(2) is complied with, whether or not the situation can be brought under G 1/03.
@Raoul:
As a second step, what remains ought to be checked whether it complies with G 2/10. What is left out by the undisclosed disclaimer should not lead to new information to be derivable from the application as filed.
I would not say "what is left out" but "what is left in". It is the subject-matter remaining in the claim after cutting away the excluded subject-matter that counts.
It is only if both successive tests are passed in a positive way that the disclaimer is then "fully" acceptable.
Do you not agree that, if introducing the undisclosed disclaimer does not lead to new information, then Art. 123(2) is complied with? Why would any other test be needed in that case?
G 1/03 is intended for cases where the introduction of the disclaimer DOES lead to new information. The EBA has formulated conditions under which this should be allowed for pragmatic reasons.
@Anonymous:
Although I would agree that there's no one-size-fits all rule with respect to disclaiming specific embodiments, the Enlarged Board did hint that it wanted the Boards to follow the jurisprudence that had been set out for positive limitations.
What the Board means is that there is no fundamental difference between a positive limitation and a negative limitation: both are limitations. There is no reason to apply different principles when examining their allowability under Art. 123(2) EPC.
With ranges this is pretty clear: the positive limitation "x > 10" is identical to the negative limitation "not x <= 10".
A limitation being positive or negative is mainly a question of the words chosen for expressing the limitation. Art. 123(2) is not about words but about the subject-matter cut out by the words of the claim. It is fine to change the words, as long as the subject-matter cut out by them remains the same (or at least has a basis in the application as filed).
G 2/10 in point 4.5.4 indeed approves T 615/95.
The point of T 615/95 seems to be that if you have a claim defining combinations of features taken from several sufficiently long lists, then it is OK to delete individual items from these lists and/or to disclaim certain combinations. The idea behind this seems to be that due to the "two lists" principle, the subject-matter of the claim is not a collection of individualised combinations, but is the "general" collection of combinations as a whole. Apparently shrinking this collection in size does not add matter in the view of the Board of T 615/95 and in the view of the EBA, because the "general" teaching is not affected. I find it hard to deny though that the resulting collection as a whole represents new information in the sense that this precise collection as a whole could most likely not be derived from the application as filed... (it might not be new in the sense of novelty).
Why would an applicant want to shrink the scope of a claimed general teaching? Normally to turn something not meeting the criteria of Art. 52 and 83 into something that does meet those criteria. If a technical effect can only be made plausible for part of the original scope, should the applicant be allowed to shrink the claim to that part (without basis in the original application for that shrinked scope)? I don't think so.
Assuming the EBA agrees with me on this, does the EBA imply that the assessment of compliance with Art. 123(2) should involve an assessment of whether the shrinked subject-matter has an effect on the technical effects being achieved over the whole claimed scope (and on whether in the future a 54(2) document might show up that is novelty destroying for the old scope but not anymore for the new scope)?
Although I was quite happy at first with G 2/10, I am realising more and more that it is the not necessarily pretty result of a compromise.
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