On 18 December 2017, the Enlarged Board of Appeal of the European Patent Office (EBoA) handed down the decision in case G 01/16, answering legal questions on the admissibility of undisclosed disclaimers and the applicability of the so-called “gold standard disclosure test” as defined in Decision G 2/10 for the subject-matter remaining in the claim. The Enlarged Board held that:
“For the purpose of considering whether a claim amended by the introduction of an undisclosed disclaimer is allowable under Article 123(2) EPC, the disclaimer must fulfil one of the criteria set out in point 2.1 of the order of decision G 1/03.
The introduction of such a disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular, it may not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure. A disclaimer may not remove more than necessary either to restore novelty or to disclaim subject matter excluded from patentability for non-technical reasons.”
With this decision, the relationship of earlier EBoA Decisions G 1/03 on the admissibility undisclosed disclaimers and G 2/10 on allowability of disclosed disclaimers has been finally clarified. The Enlarged Board stated that “for undisclosed disclaimers the proper test is whether the criteria of G 1/03 are fulfilled, and for disclosed disclaimers, the proper test is the gold standard disclosure test of G 2/10.”. Earlier attempts by some Appeal Boards to apply and adapt the remaining subject-matter test of G 2/10 also to claims including an undisclosed disclaimer according to G 1/03 have been repealed. Decision G 1/16 will serve as a guidance for a uniform approach on assessing the allowability of a claim including an undisclosed disclaimer and will in the future remove uncertainty with the handling of such cases before the Examining and Opposition Divisions of the EPO and the Boards of Appeal.
Maiwald represents the Patent Proprietors, The Trustees of Princeton University and the University of Southern California, and initiated the referral of questions to clarify the relationship of Decisions G 1/03 and G 2/10 regarding the admissibility of undisclosed disclaimers. Maiwald’s patent attorney team for this case is Dr Norbert Hansen, Dr Stefanie Parchmann, Dr Nils Braun and Alexander Ortlieb.