A Technical Board of Appeal at the EPO has referred a question to the EPO’s Enlarged Board of Appeal.  The question concerns the amendment of a claim to introduce a “disclaimer”, and the circumstances under which such an amendment adds subject matter to an application.  This referral is now pending as case G2/10 ("Disclaimer").

A disclaimer is a negative limitation in a claim.  For example, a claim may relate to a broad general class, and a disclaimer may be included in order to exclude a specific member of that class from the scope of protection. 

In the present case, the claim related to a class of catalytic nucleic acid molecules.  A disclaimer was introduced, by amendment, to exclude certain molecules within this class from the scope of protection.  These excluded class members were disclosed in the application as filed, but they were presented as embodiments of the invention. 

The application was refused by the Examining Division, because it considered that this disclaimer represented added subject matter.  The Examining Division held that the description of these members as embodiments of the invention did not provide basis for excluding them from the scope of the claims.  

The applicant appealed, and the EPO has recently made available the minutes of the oral proceedings held for the appeal.  In the oral proceedings, the Board of Appeal decided to refer the following question to the EPO’s Enlarged Board of Appeal: 

“Does a disclaimer infringe Article 123(2) EPC if its subject-matter was disclosed as an embodiment of the invention in the application as filed?” 

It appears that this Board of Appeal is seeking to resolve recent case law on this point, where the Boards of Appeal have taken differing views. 

(Note that this situation is different from the situation considered in the Enlarged Board decision G1/03, which is concerned for the most part with disclaimers which do not have basis in the application as filed (so-called undisclosed disclaimers).  It describes certain, very limited, circumstances where it is not added subject matter to include an undisclosed disclaimer in the claims.)

Published on 16th July 2010