Disclosed disclaimers are those that disclaim subject matter that has basis in the application as filed e.g. in an embodiment. In this week’s decision, the Enlarged Board has confirmed its previous decision G2/10, specifying that the applicable test is the usual gold standard for assessing added matter under Article 123(2) EPC: whether the subject matter remaining in the claim after the introduction of the disclaimer is (be it explicitly or implicitly) directly and unambiguously disclosed to the skilled person using common general knowledge in the application as filed.
By contrast, undisclosed disclaimers are those where neither the subject matter excluded by the disclaimer nor the disclaimer per se have been disclosed in the application as filed. The allowability of undisclosed disclaimers was dealt with by the Enlarged Board over a decade ago in G1/03. In the referral for the present decision, the referring Board noted that the more recent G2/10 implied that the gold standard applied to all amendments, including undisclosed disclaimers, so the Board asked whether G1/03 should therefore be set aside.
The answer from the Enlarged Board was “no”. Specifically, undisclosed disclaimers are allowed (and the so-called gold standard does not apply) in the limited cases set out in G1/03: where the disclaimer is necessary to restore novelty over state of the art under Article 54(3) EPC (earlier-filed, later-published prior art) or an accidental anticipation under Article 54(2) EPC (earlier-published prior art), or to disclaim subject matter which is excluded from patentability for non-technical reasons. However, G1/16 emphasises that the disclaimer may not provide a technical contribution to the subject matter disclosed in the application as filed, and the applicant/proprietor’s position with regard to other requirements for patentability should not be improved.
We will continue to monitor the impact of the G1/16 and provide further updates where relevant. In the meantime, if you have any specific queries please speak to your normal contact at Carpmaels & Ransford.