Allowability of disclaimers before the European Patent Office

Transcription

1 PATENTS Allowability of disclaimers before the European Patent Office EPO DISCLAIMER PRACTICE The Boards of Appeal have permitted for a long time the introduction into the claims during examination of disclaimers, i.e. negative features excluding specifically defined embodiments from the scope of a claim, which do not have any support in the application as originally filed. This practice was in contradiction with the general rule that all amendments have to be based on the application as filed in order to satisfy the requirements of Article 123(2) EPC. The legal situation concerning an undisclosed feature limiting the scope of protection was already dealt within decision G01/93, in which it was held that: "A feature which has not been disclosed in the application as filed, but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Art. 123(2) EPC." The disclaimers for excluding subject-matter disclosed in prior art according to Article 54(3) EPC were generally admitted where the subject-matter remaining in the claim cannot be defined more clearly and concisely by positive technical features. Certain conditions were subsequently developed in the case law of the Boards of Appeal where the disclaimer was introduced in order to delimit the claim against subject-matter belonging to the state of the art pursuant to Article 54(2) EPC. In decision T 170/87, it was held that a disclaimer can be used to make an inventive teaching which overlaps with the state of the art novel, but it cannot make an obvious teaching inventive. The concept of accidental anticipation, i.e. accidentally novelty-destroying prior art disclosure was introduced in the case law of the Boards of Appeal. According to decisions T 608/86 and T 1071/97, a disclosure is accidentally noveltydestroying if it would have been disregarded by the skilled person faced with the problem

2 underlying the application, either because it belongs to a remote technical field or because it does not solve the problem. In decision T 525/99, the exceptional circumstances to exclude a specific prior art disclosure from the invention claimed in a particular claim by means of a disclaimer, are summarized as follows: (1) but for the disclaimer the prior art document would destroy the novelty of the claim, (2) the wording of the disclaimer was based clearly and unambiguously on the disclosure of the prior art document, (3) the prior art disclosure was accidental in the sense that after the disclaimer it would not remain relevant for inventive step, (4) the disclaimer did not amount to the introduction of a feature providing a technical contribution, which would give an unwarranted advantage to a patentee, such as one creating a selection invention. However, this practice was drastically changed by decision T 323/97 in which the European Board of Appeal declared that: "any amendment of a claim not having support in the application as filed and aiming at distancing the claimed subject-matter further from the state of the art, in particular by way of a disclaimer, contravenes Article 123(2) EPC and is consequently inadmissible." This Board of Appeal based its decision on the Enlarged Board of Appeal decision G2/98 which dealt with right to priority. This decision, in complete contradiction with the previous decisions regarding disclaimers, had led to uncertainty among applicants as to how they will be allowed to claim, depending on the position adopted by the Board responsible for the case in question. Clarification was needed and the following questions were referred to the Enlarged Board of Appeal by decisions G 001/03 and G 002/03. THE QUESTIONS REFERRED TO THE ENLARGED BOARD OF APPEAL ARE AS FOLLOWS : - in decision G001/03

3 1 Is an amendment to a claim by the introduction of a disclaimer unallowable under Article 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? (a) In particular, is it of relevance whether the claim is to be delimited against a state of the art according to Article 54(3) EPC or against a state of the art according to Article 54(2) EPC? (b) Is it necessary that the subject-matter excluded by the disclaimer be strictly confined to that disclosed in a particular piece of prior art? (c) Is it of relevance whether the disclaimer is needed to make the claimed subject-matter novel over the prior art? (d) Is the criterion applicable that the disclosure must be accidental, as established by prior jurisprudence, and, if yes, when is a disclosure to be regarded as being accidental, or (e) is the approach to be applied that a disclaimer which is confined to disclaiming the prior art and has not been disclosed in the application as filed is allowable under Article 123(2) EPC, but that the examination of the subjectmatter claimed for the presence of an inventive step has then to be carried out as if the disclaimer did not exist? - in decision G002/03 1. Is the introduction into a claim of a disclaimer not supported by the application as filed admissible, and therefore the claim allowable under Article 123(2) EPC, when the purpose of the disclaimer is to meet a lack-of-novelty objection pursuant to Article 54(3) EPC? 2. If yes, what are the criteria to be applied in assessing the admissibility of the disclaimer? THE ESSENTIAL POINTS OF THE DECISIONS G001/03 & G002/03 I ALLOWABILITY OF DISCLAIMERS First of all, the Enlarged Board of Appeal states that the term disclaimer means, in accordance with normal practice: an amendment to a claim resulting in the incorporation therein of a "negative" technical feature, typically excluding from a general feature specific embodiments

4 or areas. Then, the Enlarged Board of Appeal rejects the definition of a disclaimer as a mere voluntary restriction by which the Applicant abandons part of the claimed subject matter and concludes that: Any amendment to a claim is presumed to have a technical meaning; otherwise it would be useless to have it in the claim. In any event, a feature without a technical meaning would not restrict the scope of a claim. 1) Conflicting applications In point 2.1.1, the Enlarged Board of Appeal summarises the two approaches used in the European countries for resolving the problem raised by conflicting applications, namely the whole contents approach and prior claim approach and explains how the whole contents approach was adapted by the European Convention. Thereafter, referring to decision T 323/97 which created uncertainty regarding practice in the area of disclaimers, the Enlarged Board of Appeal states that decision G02/98 cannot be invoked as an authority against allowing a disclaimer limiting the claimed subject matter without affecting the technical teaching in the application (see point 2.1.2). In point 2.1.3, the Enlarged Board of Appeal indicates that a disclaimer excluding a conflicting application is not in contradiction to Article 123(2) EPC because such a disclaimer only excludes subject matter for legal reasons and has no bearing on the technical information contained in the invention. 2) State of the art under Article 54(2): accidental anticipation The Enlarged Board of Appeal is of the opinion that the concept of accidental anticipation is akin to the situation of conflicting applications already discussed, starting from the premise that only novelty is to be considered. Referring to decisions T 608/96 and T1071/97, the Enlarged Board of Appeal states that: they say in similar terms that a disclosure is accidentally novelty-destroying, if it was disregarded by the skilled person faced with the problem underlying the application, either because it belonged to a remote technical field or because its subject-matter suggested it would not help to solve the problem. Thus, according to these decisions, the disclosure has to be completely irrelevant for assessing inventive step. Furthermore, the Enlarged Board of Appeals draws attention to the fact that individual elements of these definitions and other attempts to find an adequate definition of accidental anticipation cannot be taken in isolation, specifying that: What counts is that from a technical point of view, the disclosure in question must be so unrelated and remote that the person skilled in the art would never have taken it into consideration when working on the invention. For the Enlarged Board of Appeal, this definition corresponds to the literal meaning of the

5 term accidental anticipation and is a justification comparable to the case of conflicting applications. The Enlarged Board of Appeal concludes that a disclaimer for excluding the subject matter of an accidental anticipation is not in contradiction with Article 123(2) EPC. In the case of an accidental anticipation, its definition (see above) makes clear that it has nothing to do with the teaching of the claimed invention, since it cannot be relevant for examining inventive step. Therefore, a mere disclaimer excluding the subject-matter of an accidental anticipation may be assumed not to change the technical information in the application as filed and, for this reason, also not to change the subject-matter of the application as filed, within the meaning of Article 123(2) EPC. 3) State of the art under Article 54(2) EPC : non-accidental anticipations During the procedure, it was suggested that a disclaimer should not be taken into account for assessing inventive step. The Enlarged Board of Appeal does not accept this argument and states that it is the invention as claimed which should be examined. 4) Exceptions to patentability Disclaimers for excluding unpatentable subject matter under Article 52 to 57 EPC are also admissible. 5) Non-working embodiments Disclaimers for excluding non-working embodiments are not admissible. In the opinion of the Enlarged Board of Appeal, such a disclaimer is neither necessary nor appropriate when there is a large number of conceivable alternatives and the specification contains sufficient information on the relevant criteria for finding appropriate alternatives over the claimed range with reasonable effort. In the other cases, the requirements of inventive step or sufficiency of disclosure are not fulfilled. 6) Disclaimers making a technical contribution A disclaimer should not be required to achieve the technical effect sought and also should not be relevant for accepting inventive step or sufficiency of disclosure. II DRAFTING DISCLAIMERS The disclaimer should not remove more than is necessary to restore novelty or to disclaim subject matter excluded from patentability for non-technical reasons.

6 In this context, the Enlarged Board of Appeal specifies that the necessity for a disclaimer is not an opportunity for the Applicant to reshape the claims arbitrarily. It is also pointed out that the requirements of conciseness and clarity of Article 84 EPC are also applicable to claims with disclaimers. Furthermore, it should be clear from the specification that there is an undisclosed disclaimer and the reason why it has been introduced. The disclaimer should not be hidden by using undisclosed positive features defining the difference between the original claim and the anticipation. The excluded prior art should be indicated in the description in accordance with Rule 27(1)(b) EPC and the relation between the prior art and the disclaimer should be shown. III DISCLAIMERS AND RIGHT TO PRIORITY The Enlarged Board of Appeals also examines the disclaimer with regard to the priority right and points out that the disclosure as the basis for the right to priority under Article 87(1) EPC and as the basis for amendments in an application under Article 123(2) EPC has to be interpreted in the same way. In other words, a disclaimer, not providing a technical contribution to the invention, which is allowable during the prosecution of a European patent application does not change the identity of the invention within the meaning of Article 87(1) EPC. Therefore, its introduction is allowable also when drafting and filing the European patent application without affecting the right to priority from the first application, which does not contain the disclaimer. * * * * * THE RESPONSES OF THE ENLARGED BOARD OF APPEAL ARE AS FOLLOWS: 1. An amendment to a claim by the introduction of a disclaimer may not be refused under Article 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim has a basis in the application as filed. 2. The following criteria are to be applied for assessing the allowability of a disclaimer which is not disclosed in the application as filed: 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) and (4) EPC; - restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC; an anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention; and - disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from

7 - disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons. 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."