Decision G 1/16 of the Enlarged Board of Appeal of the European Patent Office – Disclaimer III

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Alfred Köpf | Christian Ebner

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Various different requirements and ­criteria have to be met in order to obtain an intellectual property right for a particular good, process or service. Applicants are often faced with the problematic situation that a major part of their claim indeed meets these requirements, but a minor part makes it unallowable. As an intellectual property right will only be granted if the claim in its entirety meets all legal requirements, the applicant faces a severe problem. In order to resolve these issues, disclaimers have evolved as important and ­popular tools in different fields of intellectual property law. A disclaimer is a negative feature that may be used to precisely excise the problematic part of a claim not meeting the legal requirements and thus resulting in an allowable intellectual property right.

While in recent years, disclaimers have become more and more common in patent claims, they are by no means limited to patent law. For example, in European trademark law, a community trademark must be distinctive for a specific product or service. In cases in which only single products or services do not meet the criterion of distinctiveness, the use of a disclaimer excluding this single product or service may cause the trademark to be registrable. Hence, a disclaimer serves to balance the competing interests of two parties. On the one hand, it extends the scope of protection for applicants, as an otherwise non-registrable trademark may be obtained. On the other hand, third-party interests are preserved, as disclaimers exclude non-registrable elements from the very beginning.

Another example in which disclaimers may be used in trademark law is the conflict of a younger trademark claiming protection for a broad generic range of goods or services which includes a specific good or service already protected by an older trademark. Instead of deleting the broad general term and therefore losing protection for a wide range of goods or services, a disclaimer is an elegant way out, allowing for resolution of the conflict by excluding the particular good or service in suit from the more generic term.

In European patent law, disclaimers are most frequently used in chemical patents in which specific chemical compounds are excluded from the scope of broad Markush claims. The most common reason being that a specific chemical compound x² which falls within the claim of scope X (comprising x¹, x², x³ … xⁿ) is already known in the state of the art. Instead of undertaking the cumbersome and in many cases impossible attempt to claim the restricted scope, i.e. x¹, x³ … xⁿ, the use of the disclaimer “X without x²” provides an elegant solution allowing the applicant to solely exclude compound x² which is already known from the art while at the same time maintaining all other compounds in a single claim.

However, contrary to a widely held opinion, patent claims with disclaimers are by no means a particularity of the chemical field. Both in national and EPO proceedings, disclaimers are also increasingly used in mechanical cases.

In T 2316/12, for example, the applicant of European patent application EP 2 186 720 submitted an auxiliary request in which a disclaimer was used in order to exclude specific embodiments of a motor in order to establish novelty over the prior art: “wherein the drive motor is not configured to have a right-angled transmission”.

The European patent in suit EP 0 604 425 in appeal proceedings T 725/00 is directed to a toothbrush. The proprietor filed an auxiliary request in appeal proceedings aimed at restoring novelty over the teaching of a prior art document: “provided that a toothbrush in which the head and handle consist of stable elements located next to each other […] is excluded.”

In O2012_030, the Swiss Federal Patent Court had to rule on an auxiliary request in which the proprietor tried to introduce a disclaimer in order to ­exclude a specific embodiment of an adhesive tape: “wherein the adhesive layer (2) does not comprise a non-adhesive middle strip”.

In general, disclaimers are not mentioned in the EPC, and therefore, their use is not per se prohibited. Although according to Art. 84 EPC, the claims have to be clear and concise, and thus positive features should preferably be used for claiming the respective subject-matter, negative features may be used when drafting the patent claims. However, the situation is significantly different when a disclaimer is intro- | duced after filing, for example, during examination, opposition or appeal ­proceedings. Unproblematic in view of Art. 123(2) EPC is the introduction of a disclaimer in situations where the negative feature is already disclosed in the application as filed. For example, if the description discloses the literal negative feature “not X” and this feature is introduced into the claim, such a disclaimer does not contravene Art. 123(2) EPC as the respective subject-matter is undoubtedly disclosed in the contents of the application as filed. However, in practice it is usually not that easy and the Enlarged Board of Appeal of the EPO had to deal with the following ­“Disclaimer” cases.

The first disclaimer issue addressed by the Enlarged Board of Appeal concerned the allowability of a claim amendment by introduction of a ­so-called “undisclosed disclaimer”. ­Undisclosed disclaimers are disclaimers in which neither the disclaimer itself nor the excluded subject-matter is disclosed in the application as filed. For example, a claim is directed towards connectors comprising fastening elements and neither the necessary ­disclaimer “not nails” nor “nails” as the subject-matter to be excluded from the claims is disclosed in the application.

The referring Board to G 2/03 dealt in T 451/99 with an appeal in which the patent proprietor was faced with two novelty objections based on an Art. 54(2) EPC and an Art. 54(3) EPC prior art document. In an attempt to overcome these objections, two disclaimers were introduced into the claim in order to exclude the novelty-destroying embodiments. It was clear to the Board that none of the disclaimers were disclosed in the application as filed and both were thus considered to be undisclosed disclaimers.

Prior to decisions G 1/03 and G 2/03, the case law was quite divergent. T 433/86 was the first decision that allowed the exclusion of specific embodiments, even in the absence of any support in the application as filed. Even though this decision became ­established case law, the criteria under which a disclaimer is actually allowable remained largely unclear. In the following years, undisclosed disclaimers still failed due to objections based on Art. 123(2) EPC or the clarity requirements of Art. 84 EPC. On the other hand, undisclosed disclaimers were ­allowed to exclude so-called accidentally novelty-destroying prior art and to establish novelty in view of Art. 54(3) EPC documents, i.e. European patent applications that have been filed before the filing date of the application in question, but have been published only on or after the filing date. Other decisions of the Technical Boards of Appeal have held disclaimers unallowable if they had a bearing on the assessment of inventive step or if they removed more than necessary from the claims.

The landmark decision T 323/97 questioned the allowability of undisclosed disclaimers in general. In particular, the Board regarded the amendment of a claim by introduction of a negative feature as an amendment governed by Art. 123(2) EPC which thus needs to be supported in the disclosure of the original document.

Due to the divergent decisions prior to G 1/03, the following questions were ultimately referred to the Enlarged Board of Appeal:

• 1.
  “Is an amendment to a claim by the introduction of a disclaimer unallowable under Art. 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed?
• 2.
  If the answer to question 1 is no, which criteria are to be applied in order to determine whether or not a disclaimer is allowable?”

In the parallel case G 2/03, the referred questions were:

“Is the introduction into a claim of a disclaimer not supported by the application as filed admissible, and therefore the claim allowable under Art. 123(2) EPC, when the purpose of the disclaimer is to meet a lack-of-novelty objection pursuant to Art. 54(3) EPC?

If yes, what are the criteria to be applied in assessing the admissibility of the disclaimer?”

At first, the Enlarged Board of Appeal held that a disclaimer may not be refused only because the disclaimer is undisclosed. Furthermore, the Board dealt with an argument raised during proceedings that a disclaimer would per se not be a technical feature. It was explicitly noted that any amendment to a claim is presumed to have a technical meaning; otherwise, it would be useless to actually have it in the claim.

The Enlarged Board of Appeal further established a list of three primary criteria under which an undisclosed disclaimer is allowable under Art. 123(2) EPC. According to G 1/03,

• 2.1
  “A disclaimer may be allowable in order to:

  • –
    restore novelty by delimiting a claim against state of the art under Article 54(3) EPC;
  • –
    restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC;
  • –
    disclaim subject-matter which, under Article 52 to 57 EPC, is excluded from patentability for non-technical reasons.”

If either one of said criteria is met, the disclaimer is allowable. Regarding criterion (2), the Enlarged Board of Appeal defined an “accidental anticipation” as an anticipation that is so unre- | lated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when creating the invention. An example would be a chemical compound which falls within the scope of a claim directed towards a group of compounds for a pharmaceutical use but which is already known from the state of the art as a photosensitizer.

In addition to these primary criteria, G 1/03 further held that an undisclosed disclaimer also has to fulfill a list of secondary criteria in order to be ­allowable:

• 2.2
  “A disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.
• 2.3
  A disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to Article 123(2) EPC.
• 2.4
  A claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC.”

The three primary and three secondary criteria for the allowability of undisclosed disclaimers laid down in G 1/03 and G 2/03 (in the following only G 1/03 will be mentioned for ease of reading) were applied in numerous decisions of the Technical Boards of ­Appeal. However, amongst others, an important issue that arose was the question whether these criteria would also be applicable to disclosed disclaimers. In contrast to an undisclosed disclaimer, a disclosed disclaimer excludes subject-matter that has been originally ­described as a particular embodiment of the invention. For example, the ­application as filed discloses “fastening means such as nails, screws or rivets” and the claim is amended by introduction of the disclaimer “wherein the ­fastening means are not nails”.

In the referring case T 1068/07 the Technical Board of Appeal was confronted with the following issue: the examining division decided to reject European patent application EP 0 981 646 because it considered claim 1 and auxiliary request 1 to violate Art 123(2) EPC as the introduced disclaimers had no basis in the application as filed. Furthermore, in the examining division’s opinion, the disclaimers also failed to meet the criteria set forth in G 1/03, because an Art. 54(2) EPC prior art docu­ment disclosing the disclaimed subject-matter could not be considered as an accidental anticipation. In further auxiliary requests, the applicant replaced the negative features of claim 1 by additional disclaimers excluding subject-matter originally described as an embodiment of the invention. Therefore, the Board was faced with the question whether such disclosed disclaimers are allowable under Art. 123(2) EPC.

Interestingly, this issue was not new to the Boards of Appeal as in de­cision G 1/07 (exclusion from patentability as method for treatment), the Enlarged Board of Appeal noted that it is aware of the question whether or not G 1/03 also relates to disclosed disclaimers. However, in this decision, the Enlarged Board of Appeal concluded that this issue was not to be addressed in the present referral.

However, a few years later, the Board of Appeal in T 1068/07 finally referred the following question to the Board of Appeal:

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

In its decision, the Enlarged Board of Appeal held that an amendment of a claim in the form of a disclosed disclaimer infringes Art. 123(2) EPC if the subject-matter remaining in the claim after the introduction of the disclaimer is not disclosed to the skilled person in the application as filed. Whether or not the remaining subject-matter is disclosed in the application as filed and thus is in accordance to Art. 123(2) EPC must be determined with the disclosure test established in G 3/89: The remaining subject-matter must be explicitly or implicitly, directly and unambiguously disclosed to the person skilled in the art using general common knowledge. G 2/10 introduced the term “gold standard” for the disclosure test and concluded that this definition also applies to disclosed disclaimers.

Furthermore, in reason 3, G 2/10 clarified its relation to G 1/03. In particular, the Board noted that it becomes clear from the referring decision of G 1/03 that the referral was only directed to situations in which neither the ­disclaimer nor the disclaimed subject-matter is disclosed in the appli­cation as filed (i.e. undisclosed disclaimers). Thus, G 2/10 concluded that G 1/03 does not relate to disclosed ­disclaimers in which the disclaimed subject-matter has originally been described as part of the invention.

At first glance, the situation seemed to be entirely clear: Decision G 1/03 must be applied to determine the allowability of undisclosed disclaimers and G 2/10 to determine the allowability of disclosed disclaimers. However, a closer review of the reasons of G 2/10 reveals several passages which imply that the gold standard should also be applied to undisclosed disclaimers – ­potentially as an additional requirement.

In reason 4.3, G 2/10 explicitly states that any amendment has to fulfill the requirements of Art. 123(2) EPC:

“The importance and the applicability, without exception, of Art. 123(2) EPC was underlined in the jurisprudence of the Enlarged Board of Appeal as early as in its opinion G 3/89 and decision G 11/91. 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 is subject to the mandatory prohibition on extension laid down in Art. 123(2) EPC and can therefore, irrespective of the amendment made, only be made | within the limits if what a skilled person would derive directly and unambiguously, using general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents.”

In reason 4.7 of G 2/10, the Enlarged Board of Appeal goes even further, stating that the gold standard always has to be fulfilled and the criteria of G 1/03 are only additional requirements:

“The wording that the Enlarged Board chose in the starting line of answer 2 [of G 1/03] ‘a disclaimer may be allowable’, indicates that with the criteria set up in answer 2 the Enlarged Board did indeed not intend to give a complete definition of when an undisclosed disclaimer violates Art. 123(2) EPC and when it does not. Hence, in that decision [G 1/03] it was not decided that, the requirements of answer 2 being fulfilled, an undisclosed disclaimer would be always allowable under Art. 123(2) EPC.”

If indeed the gold standard was also to be applied for determining the allowability of undisclosed disclaimers, decision G 2/10 would have basically set aside G 1/03 and would have made it redundant. Namely, if the requirements of Art. 123(2) EPC as established by the gold standard, are fulfilled, i.e. if the remaining subject-matter after introduction of an undisclosed disclaimer were directly and unambiguously disclosed in the application as filed, the amendment is by definition allowable. Therefore, in such a scenario the disclaimer would always be allowable and the criteria established in G 1/03 would no longer be necessary. In contrast, if an undisclosed disclaimer actually must fulfill the requirements of Art. 123(2) EPC as determined by the gold standard, there would by definition be virtually no chance of an undisclosed disclaimer being allowable.

Not surprisingly, the case law of the Technical Boards of Appeal has developed in different directions after G 2/10. Several decisions applied the gold standard as an additional requirement to undisclosed disclaimers, whereas other decisions undertook attempts to modify the gold standard for undisclosed disclaimers. There have even been decisions, which basically ignored G 1/03 and primarily analyzed undisclosed disclaimers under the criteria set out in G 2/10, while others continued to apply the criteria of G 1/03.

In its decision O2012_030 the Swiss Federal Patent Court has distinguished G 1/03, which was held to ­apply for undisclosed disclaimers from G 2/10 to be applied to disclosed disclaimers. Noteworthy, in applying the principles of G 2/10 for disclosed disclaimers, the Federal Patent Court also took a peculiarity of the Swiss Patent Law into account. According to Art. 24 para. 1 lit. c of the Federal Patent Act, an allowable amendment not only has to be supported in the application as originally filed, but also in the granted and published patent.

After numerous varying Boards of Appeal decisions taking different ­approaches to either abandon G 1/03 or to attempt to interpret the statements of G 2/10 in a way that would somehow continue to allow undisclosed disclaimers in view of the established principles, in T 437/14 the Board finally filed a referral to the Enlarged Board of Appeal.

During the appeal proceedings, the proprietor of European patent EP 1 933 395 had restricted the independent claim by including two undisclosed disclaimers in order to establish novelty over two Art. 54(2) EPC prior art documents. It is noteworthy that both prior art documents represent accidental anticipations within the meaning of G 1/03 and would thus have been allowable if G 1/03 were solely to be considered.

The questions referred to the Enlarged Board of Appeal in G 1/16 were as follows:

• 1.
  “Is the standard referred to in G 2/10 for the allowability of disclosed disclaimers under Art. 123(2) EPC, i.e. whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as ­explicitly or implicitly, but directly an unambiguously, disclosed in the application as filed, also to be applied to claims containing undisclosed disclaimers?
• 2.
  If the answer to the first question is yes, is G 1/03 set aside as regards the exceptions relating to undisclosed disclaimers defined in its answers 2.1?
• 3.
  If the answer to the second question is no, i.e. if the exceptions relating to undisclosed disclaimers defined in answer 2.1 of G 1/03 apply in addition to the gold standard, may this standard be modified in view of these exceptions?”

During the proceedings, submissions were made by the parties involved, the EPO and interested parties filed amicus curiae briefs. An important ­argument brought up in favor of also applying the gold standard to undisclosed disclaimers was that G 1/03 did not explicitly define exceptions to the gold standard, which constitutes a uniform concept of disclosure with respect to Arts. 54, 56 and 123(2) EPC. It was further argued that G 1/03 only intended to limit the range of undisclosed disclaimers in terms of their admissibility. Once the admissibility has been established, it must be examined whether the undisclosed disclaimer actually fulfills the gold standard. In another submission it was argued that while the gold standard should be applied to undisclosed disclaimers serving to establish novelty over an Art 54(3) EPC prior art or an accidental anticipation under Art. 54(2) EPC, G 1/03 should solely be applied to undisclosed disclaimers that exclude subject-matter for non-tech­nical reasons under Arts. 52 to 57 EPC.

The majority of submissions, however, favored not applying the gold standard to undisclosed disclaimers. It was argued that G 1/03 allowed for a specific, narrow exception to the requirements of Art. 123(2) EPC. Such | exceptions would only be introduced for legal reasons and not for technical reasons, and would thus not have any effect on the technical information in the application as filed. Other undisclosed disclaimers which address the issue of inventive step or sufficiency of disclosure and thereby would have an effect on the technical information are explicitly unallowable according to G 1/03 anyway. Furthermore, an undisclosed disclaimer can by definition not be disclosed in the application as originally filed. It would thus be counterintuitive if G 1/03 would establish a list of primary and secondary criteria for disclaimers that would basically have no chance to be allowable due to a separate requirement. Therefore, once the criteria of G 1/03 are fulfilled, an undisclosed disclaimer shall be deemed to comply with Art. 123(2) EPC per se.

In its ruling, the Enlarged Board of Appeal emphasized the conceptual differences of disclosed and undisclosed disclaimers which have to be taken into account when examining whether an amendment, by virtue of the introduction of a disclaimer, is allowable under Art. 123(2) EPC. Furthermore, the finding of G 2/10 that the gold standard is the only test to be met for disclosed disclaimers has been confirmed by G 1/16. Regarding the arguments submitted which pointed out that a disclaimer would not change the technical information of the remaining subject-matter, G 1/16 clearly disagrees. The introduction of a disclaimer excludes subject-matter from the claim by definition, thereby altering the technical content of the claim. However, the Board also appreciated the fact that the EPC would leave virtually no room for an undisclosed disclaimer to be allowable if it would have to meet the gold standard.

The Enlarged Board of Appeal concluded from the above that considering the distinctive nature of disclosed and undisclosed disclaimers, a single specific test for assessing their allowability with respect to the requirements of Art. 123(2) EPC is ultimately necessary. Consequently, the test for deciding whether or not an undisclosed disclaimer is allowable is the criteria established in G 1/03 and the test for disclosed disclaimers is the gold standard of G 2/10. Hence, the primary and ­secondary criteria of G 1/03 are the only requirements that have to be met when a claim is amended by the introduction of an undisclosed disclaimer. Once these are fulfilled, the amendment for legal reasons may be considered allowable under Art. 123(2) EPC. If however one of these criteria is not met, the introduction of an undisclosed disclaimer cannot be allowed and therefore violates Art. 123(2) EPC.

Furthermore, G 1/16 provided clarification on two potentially unclear statements in G 1/03:

• 1.
  “A disclaimer which only excludes subject-matter for legal reasons is not in contradiction to Art. 123(2) EPC.
• 2.
  Any amendment to a claim is presumed to have a technical meaning, otherwise it would be useless to have it in the claim.”

In the present decision G 1/16, the Enlarged Board of Appeal demonstrates that a disclaimer “compounds X without A” always alters the technical information because prior to the amendment, the skilled person is taught that all compounds X achieve effect Y, while after the amendment only the compounds X – A achieve this effect. Undeniably, the technical information of the claims is modified by the amendment.

However, the Board held that the question to be asked is not whether an undisclosed disclaimer quantitatively reduces the original teaching, but whether it qualitatively changes the teaching in a sense that the applicant’s or proprietor’s position is improved with regard to other requirements of the EPC such as the inventive step. The Enlarged Board of Appeal thus concludes that the evaluation of the inventive step has to be carried out disregarding the undisclosed disclaimer. As a consequence, any unallowable modification of the original technical teaching is avoided. This approach has already been used by the Technical Board of Appeal in T 710/92, which is therefore confirmed by G 1/16.

In conclusion, the Enlarged Board of Appeal clarified the relation of G 1/03 and G 2/10 by strictly assigning them as the sole criteria for undisclosed and disclosed disclaimers respectively. However, due to the rather confusing situation prior to G 1/16, the Board did not simply answer the first question in the negative, but explicitly held that for the purpose of considering whether an amendment of a claim by virtue of the introduction of an undisclosed disclaimer is allowable under Art. 123(2) EPC, the disclaimer must fulfill one of the three primary criteria of G 1/03. It further explicitly pointed out that the disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. Hence, the introduction of a disclaimer may not become relevant for the assessment of inventive step or for sufficiency of disclosure, may not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability.

In summary, decision G 1/16 of the ­Enlarged Board of Appeal of the EPO has finally erased all doubts regarding the allowability of undisclosed disclaimers by establishing that the criteria of G 1/03 alone are to be applied for undisclosed disclaimers, while the gold standard of G 2/10 is to be applied to disclosed disclaimers. The decision is very welcomed by practitioners, not only for finally clarifying the relationship between G 1/03 and G 2/10, but also for the fact that any other outcome would have significantly complicated | patent drafting. Over the last decades, not only has the overall number of ­European patents increased enormously, but the length of European ­patent documents has also grown considerably. One important driving force behind the latter effect is the ­ever-stricter application of Art. 123(2) EPC requirements by the EPO’s first and second instances. One can only hardly imagine how things would have developed in this respect if accidental anti­cipations of single embodiments could no longer have been remedied by a disclaimer. Diligent patent attorneys would have tried to disclose any pos­sible combination of features separately. Thanks to a well-reasoned and sensible decision in G 1/16 we have been spared this fate, and a clear legal basis for both types of disclaimers has been established.