tag:blogger.com,1999:blog-2352189175211648260.post1560869713356251373..comments2023-10-24T14:45:41.342+02:00Comments on K’s Law: T 761/08 – Beware Of Disclaimersorhttp://www.blogger.com/profile/07992102028406713066noreply@blogger.comBlogger8125tag:blogger.com,1999:blog-2352189175211648260.post-90967181363248492982011-02-09T07:47:19.140+01:002011-02-09T07:47:19.140+01:00First of all I have to admit that I hav just looke...First of all I have to admit that I hav just looked in Oliver's summary.<br /><br />I would say that the disclaimer was introduced to restore novelty in view of D1, which a 54(3) document. However, there is another document, D10, which is 54(2), and, consequently, relevant for both novelty and inventive step. As already pointed Myshkin, the undisclosed disclaimer should not be taken into consideration for inventive step, and the "full" claim, without considering the undisclosed disclaimer, must be inventive.<br /><br />The guidelines says regarding undisclosed disclaimer (C-VI 5.3.11):<br /><br />However, an undisclosed disclaimer is NOT allowable if:<br /><br />(i) it is made in order to exclude non-working embodiments or remedy insufficient disclosure;<br />(ii) it makes a technical contribution. <br /><br />An undisclosed disclaimer is, in particular, not allowable in the following<br />situations:<br />(i) the limitation is relevant for assessing inventive step;<br />(ii) the disclaimer, which would otherwise be allowable on the basis of a conflicting application alone (Art. 54(3)), renders the invention novel or inventive over a separate prior art document under Art. 54(2), which is a not accidental anticipation of the claimed invention;<br />(iii) the disclaimer based on a conflicting application removes also a deficiency under Art. 83;Kimiko Lokonoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-83895292835499465632011-02-09T02:41:34.683+01:002011-02-09T02:41:34.683+01:00@Anonymous:
"The two alternative cases referr...@Anonymous:<br />"The two alternative cases referred to Myshkin are in fact not equivalent. If the board establishes lack of inventive step of the claim with disclaimer then the patentee can amend by further restriction. But if the board says the claim is bad for added subject-matter because of the disclaimer then the poor patentee will have to try to get rid of it somehow ..."<br /><br />I suppose the Board in T 761/08 would have allowed the claim if it was further restricted with inventive (and disclosed) features, since that would have rendered the disclaimer again irrelevant for inventive step (in my understanding). The normal rules of A. 123(2) including the Art. 123(2)/(3)-trap do not really apply here.<br /><br />@EQE Tools:<br />I was only thinking of undisclosed disclaimers, but on second thoughts I realise that my definition of "relevant" is needlessly complicating matters.<br /><br />A better definition might be: a disclaimer is "relevant" for inventive step if and only if the claim without the disclaimer lacks inventive step (where lack of novelty over non-accidental A. 54(2) prior art is a special case of lack of inventive step).<br /><br />With this definition the approach taken in T 761/08 is correct, and Oliver's criticism does not apply.<br /><br />However, reading point 2.6.5 of G 1/03 does give me the impression that the Enlarged Board was thinking of my first definition. An undisclosed disclaimer intended to restore novelty over accidental or A. 54(3) prior art infringes A. 123(2) if it has effects which go beyond this purpose. If the claim without the disclaimer lacks inventive step, and it still lacks inventive step with the disclaimer, I don't see that the disclaimer has an effect going beyond its purpose. But again, whether one uses the first or second definition does not matter for the final outcome. (Of course in T 761/08 one might say that the disclaimer had the effect of restoring novelty over non-accidental A. 54(2) prior art, and that this effect goes beyond the purpose of the disclaimer.)<br /><br />"A disclosed disclaimer can never offend against Article 123(2), obviously because it is disclosed."<br /><br />Well, we have G 2/10 pending now ;-). I agree though that a disclosed disclaimer, i.e. disclosed in the application as excluding subject-matter, never offends against A. 123(2).Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-30750590545168356632011-02-08T10:14:36.573+01:002011-02-08T10:14:36.573+01:00As I understand it, a disclaimer being relevant fo...<i> As I understand it, a disclaimer being relevant for inventive step means that the claim without the disclaimer lacks inventive step, but the claim with the disclaimer is inventive.</i><br /><br />I don't think this reasoning is correct for undisclosed disclaimers. Key issue in this decision (I have to admit I only looked at the summary by Oliver) seems that the board found that D10 takes away novelty of the claim except for the disclaimer part. In such a situation, the Board applies G1/03 and finds that D10 is Article 54(2) prior art and is not an accidental anticipation (this is apparently not said explicitly). Then, applying G1/03 the claim offends Article 123(2).<br /><br />(A non-disclosed disclaimer may only be introduced and only be allowed for restoring novelty. In this case D10 is in the same technical field as the the claimed invention AND it is prior art under Article 54(2). Thus, in view of D10 the disclaimer <b>becomes</b> relevant for assessment of inventive step.)<br /><br />Now, for disclosed disclaimers the reasoning may be different and you may be correct. A disclosed disclaimer can never offend against Article 123(2), obviously because it is disclosed. In such a case the disclaimer may add an inventive step to the invention.EQE Toolshttps://www.blogger.com/profile/17549211485928852883noreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-62582893400496195952011-02-08T10:04:43.215+01:002011-02-08T10:04:43.215+01:00As Oliver says, disclaimers are uncommon in mechan...As Oliver says, disclaimers are uncommon in mechanics, so I expect the deciding mechanical board in this case had as little experience of them as he has! I wonder what the outcome would have been if a chemical board had been involved ...<br /><br />The two alternative cases referred to Myshkin are in fact not equivalent. If the board establishes lack of inventive step of the claim with disclaimer then the patentee can amend by further restriction. But if the board says the claim is bad for added subject-matter because of the disclaimer then the poor patentee will have to try to get rid of it somehow ...Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-90699495455407632062011-02-08T03:33:32.000+01:002011-02-08T03:33:32.000+01:00As I understand it, a disclaimer being relevant fo...As I understand it, a disclaimer being relevant for inventive step means that the claim without the disclaimer lacks inventive step, but the claim with the disclaimer is inventive.<br /><br />So if there is prior art taking away inventive step for the claim without the disclaimer, then:<br />- either the claim with the disclaimer also lacks inventive step,<br />- or the claim with the disclaimer is inventive in which case the disclaimer is relevant and infringes Art. 123(2).<br />In either case the claim is not allowable.<br /><br />It seems the Board in T 761/08 takes a bit of a shortcut, since it did not examine whether the disclaimer made the claim inventive over D10. The Board's approach is more economic and still leads to the correct outcome, but seems not fully in line with G 1/03. Unless my understanding of G 1/03 is less than perfect ;-).Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-51430614339724527752011-02-08T00:21:47.689+01:002011-02-08T00:21:47.689+01:00Now I am not a practitioner of disclaimers, becaus...Now I am not a practitioner of disclaimers, because in mechanics you hardly ever need them. But as I understand things, you cannot use disclaimers any more, even for A 54(3) prior art, because there will always also be (non accidental) A 54(2) prior art in view of which the disclaimer will be "relevant" for the assessment of inventive step. If this reasoning is followed, I do not see how you could use disclaimers any more. <br /><br />We definitely need more light on what "relevant" means in this context. G 1/03 is a little light on this topic.oliverhttp://k-slaw.blogspot.comnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-45018796359840755182011-02-07T23:13:01.471+01:002011-02-07T23:13:01.471+01:00I have real problems with the way this case has be...I have real problems with the way this case has been decided. The disclaimer wrt D1 met the requirements set out in G 1/03 so the granted claim did not offend against A123(2). Can then the citation of D10 justify an objection under A100(c) in opposition proceedings? It´s hard to see the logic, let alone the fairness, in that approach. If the diclaimer is now seen to add subject-matter what can the patentees do? They can't delete it because that would go against A123(3), so they're in "conflict" territory. Wouldn't it make more sense to ignore the disclaimer and simply establish lack of novelty wrt to D10?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-3869437697175564762011-02-07T12:49:47.558+01:002011-02-07T12:49:47.558+01:00I am surprised they did not at least mention that ...I am surprised they did not at least mention that D10 is not an "accidental anticipation". It is the only criteria to check before assessing a disclaimer is admitted or not vs a 54(2) document, ac to G1/03. Of course, here, D10 seems not to be an accidental anticipation.Anonymousnoreply@blogger.com