Enlarged Board of Appeal Hearing on Disclaimers

On 8 December, our partner in Munich, Felix Rummler, attended the oral proceedings before the Enlarged Board of Appeal in combined cases G1/03 and G2/03. These are cases that have been referred to the Enlarged Board (from Board of Appeal cases T451/99 and T507/99) on the question of whether disclaimers having no basis in the application as filed should be allowed or whether they infringe the prohibition on added matter set out in Article 123(2) EPC.

This is a closely followed case, not least because examination of any application that has a disclaimer of prior art in its claims is currently suspended. In many cases, particularly in the chemical and biotechnology fields, disclaimers are the only way to save a claim from anticipation by prior art that was unknown to the inventor at the time of filing the patent application.

After 9 hours of debate, the Board decided to give its decision in writing. No date was set.

While it is difficult to predict the result, we believe it is unlikely that the Enlarged Board will altogether disallow disclaimers, mainly because of the effect this would have on granted patents that contain disclaimers (as allowable under current EPO practice). There was some discussion of the possibility of transitional provisions, but the Board did not give the impression that they liked this idea or even had the power to do so. Any such provisions would in any case have no binding effect in the national law of the EPC contracting states.

One of the main questions was whether disclaimers (if indeed allowable) should be allowable (a) to overcome lack of novelty in respect of an Article 54(3) (whole contents) prior art document only, or (b) to overcome any lack of novelty objection (Article 54(2)). Good arguments were provided in support of both views.

As regards inventive step, strong arguments were submitted that disclaimers (if allowable to overcome any Article 54(2) lack of novelty) should be disregarded when considering inventive step. In other words, a claim containing a disclaimer should be regarded as not containing the disclaimer when considering inventive step. This is to prevent applicants from rendering a claim inventive by a non-obvious selection of the disclaimed feature.

Another question was whether, in the event that disclaimers are not found generally allowable, they should at least be allowable to make a claim novel over an "accidental disclosure", i.e. a disclosure in a completely different technical field which just "by accident" anticipates a claim.

The general view was that it would be too difficult in practice to decide whether a disclosure was accidental or not. The same was found in respect of "accidental obviousness".

A further question was whether disclaimers should be allowed to cancel a non-working embodiment from the scope of protection. The view seemed to be that this should be possible in exceptional cases, but not generally in order to overcome insufficiency (Article 83).

As to the drafting of disclaimers, all parties argued that the disclaimer should find a direct and unambiguous basis in the prior art document from which distinction is sought. The Board seemed in favour of this.