Date: 14 May 2018
Dr. Edward Rainsford
The Enlarged Board of Appeal in its Decision of G1/16 has clarified the requirements for the use of undisclosed disclaimers.
There are a limited set of circumstances in which undisclosed disclaimers can be used and these were set out in the Enlarged Board of Appeal Decision G1/03. In essence, undisclosed disclaimers can only be used to restore novelty over certain types of prior art documents and to remove subject-matter excluded from patentability.
The issue of disclaimers was also addressed in the Decision of the Enlarged Board of Appeal of G2/10 and in this Decision it was suggested that the “gold standard” disclosure test had to be applied in the assessment of any amendment, including undisclosed disclaimers, for compliance with the added matter requirements of the European Patent Convention. The gold standard requires that the subject matter of an amendment must be directly and unambiguously derivable from the application as filed.
In light of G2/10 and the requirements of the gold standard, conflicting approaches were taken on the application of undisclosed disclaimers. As pointed out by the Board of Appeal referring the case to the Enlarged Board of Appeal, if the gold standard is applicable, then in most cases an undisclosed disclaimer would not be allowable, i.e. how can the subject matter of an undisclosed disclaimer be at the same time not described in the application and also directly and unambiguously derivable from the application as filed.
Exceptions for undisclosed disclaimers
The Enlarged Board of Appeal stated conclusively that the “gold standard” does not apply to amendments introducing an undisclosed disclaimer. This is good news for applicants as it provides greater opportunities for removing subject matter that may otherwise prevent grant of a patent application.