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Thursday, 15 July 2010

Another referral to the EBO: Allowability of disclaimers

There has been another referral to the EBO, and this one is not even on the EPO's website yet (thank you, Simon Roberts, for the pointer!). This one promises to be interesting - it concerns the much debated topic of disclaimers. In G 01/03, the EBO ruled that 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 have a basis in the application as filed. Undisclosed disclaimers are (at least) permissible to restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC, to restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC and to disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons.

In appeal T6810/07-3308, the TBA is now asking the 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?
One could call this G01/03 in reverse - the allowability of disclaiming an explicitly disclosed embodiment. The referral can be found in the minutes of the oral hearing in T6810/07-3308.

8 comments:

Anonymous said...

Although not on all fours with this referral, a disclosed disclaimer was allowed in T0478/95. The disclaimer had the effect of restricting the field of application of an apparatus, namely
" A radiographic system capable of producing shadow images but not computerised tomography images..." .

The application as filed had mentioned that the invention could be used for producing both shadow images and computerised tomography images.

Anonymous said...

(part 2)

I find this almost categorical statement in T 1107/06 highly doubtful. If it has to be accepted, why not go further and let the skilled person always read any arbitrary combination of disclosed features into the application as filed? Or any well-known equivalent of a disclosed feature? Why not? Surely the skilled person understands that this would be much appreciated by patent attorneys ;-)

Under normal circumstances, an applicant will only introduce a disclaimer into a claim in order to gain an advantage, for example to overcome an objection on inventive step. In that case, it only seems fair to ask that the application as filed contains a genuine indication that the applicant foresaw the technical advantages of the disclaimer. Otherwise, the applicant may overcome the objection by what is essentially mere luck.

The wording of the referred question seems somewhat poorly chosen. Much better would have been "Does a disclaimer NOT infringe Article 123(2) EPC if its subject-matter was disclosed as an embodiment of the invention in the application as filed?".

Indeed, this question would simply ask the EBA to decide whether T 1107/06's catchword is correct, and it seems pretty clear that that is what the Board is trying to do.

Anonymous said...

This margin seems too small for my comment, so I'll post it in two parts.

The reference to T 1107/06 in the applicant's letter of 27.05.2010 seems to confirm my initial suspicion that the referred question is not about the "undisclosed" disclaimers of G 1/03, but about the question when a disclaimer is disclosed in the application as filed.

According to some decisions (and the EQE committee for paper B), subject-matter disclosed in the application as filed can simply be disclaimed. No thought is given to the question whether the application should disclose this subject-matter in negative terms.

According to other decisions, a "disclosed" disclaimer needs to be disclosed in negative terms. This makes sense, since Art. 123(2) does not allow to arbitrarily combine individual disclosed features, but also requires a disclosure of these features in the combination claimed.

Board 3.3.04 in T 1107/06 accepted the logic of these latter decisions. However, it then stated:
"The board takes the view that when there is a generic disclosure of the invention together with a specific disclosure of an illustrative or preferred embodiment falling under the generic disclosure, the skilled person will normally imply that all the other embodiments comprised in the generic disclosure without being mentioned specifically also form part of the invention. The non-exemplified or non-preferred embodiments are thus implicitly disclosed as the logical complement of the exemplified or preferred embodiments."

Thus, the expression "any metal, for example iron" would be sufficient basis for the expression "any metal except iron".

(to be continued)

LT said...

I think a better drafting would have been : "does a disclaimer infringe Art 123(2) EPC if the subject-matter excluded by it was disclosed as an embodiment of the invention in the application as filed".

Probably that in the Board's mind, the subject-matter of a disclaimer is not the disclaimer itself, but the subject-matter it excludes.

That way, G1/03 is not relevant, since it is concerned with the cases where "neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed".

See here a detailed article on this topic : http://translate.google.com/translate?client=tmpg&hl=de&u=http://europeanpatentcaselaw.blogspot.com/&langpair=fr|en

Anonymous said...

Not sure G1/03 is relevant in any event.

But I think the "positive terms" bit of the question is fundamental to what is in issue.

If there was an express negative terms statement regarding an embodiment (for example as sub-optimal in some cases) in the application as filed I don't think there would be an argument. In those circumstances, both the disclaimer and the subject-matter excluded by it from the scope of the claim have a basis.

But even in the "positive terms" instance the disclaimed subject matter is still identified discretely in the application as filed. It's not plucked from the ether of a secondary source.

What sits less comfortably about it is that it is a disclaimer of subject matter that is disclosed expressly and only in positive terms. It is being able to use such a positive terms disclosure as the basis of a disclaimer that makes the conclusion of T 1107/06 sit oddly as a conclusion of patent law however unarguably logical it might be as a bit of set theory.

Anonymous said...

@LT:
I would then say:
"does a disclaimer infringe Art 123(2) EPC if the subject-matter excluded by it was disclosed ONLY as an embodiment of the invention in the application as filed"

This has the same effect as putting in the word NOT (except for negating the answer to the question). The question is whether a disclosure in positive terms is sufficient basis for a disclaimer.

@Anon of 5:23PM:
I doubt that the skilled person is doing set theory when reading a technical document (and we might be agreeing on this). I'd say there must be some explicit or implicit hint that the complement of a positively disclosed embodiment is to be considered as well. Just the mere possibility to arrive at something by doing set theory doesn't seem to be sufficient for implicit disclosure, at least not to me.

Anonymous said...

There are two aspects to this issue. On the one hand, it seems that an applicant or proprietor should be able to renounce to anything he has disclosed. For example, if one has disclosed a table and a chair, he should be able to only claim one of them. Of course, these are two different entities and one is not a preferred embodiment of the other. However, if he has disclosed a table, preferrably of wood, should he also be able later to renounce from the wooden table?

On the other hand, if one has disclosed red, blue and green chairs and later renounces to the red chair invoking that blue and green are cooler colors and calm people sitting on them, this would involve a property that has not been disclosed originally.

A disclaimer can be considered a shadow cast on the area covered by the claim. In this sense, a disclaimer is metalanguage, as it says something on the claim, while the claim itself says what subject-matter is to be protected. The boundaries of a claim define the properties of the subject-matter lying within and thus contribute to the inventiveness of this subject-matter.

The boundaries of a disclaimer, when considered as a shadow, do not define any new propertiy of the subject-matter lying at both sides of this boundary and should therefore not contribute to the inventiveness of the claim.

Anonymous said...

If one has disclosed red, blue and green chairs, then one may certainly limit the claims to only blue and green chairs. Whether the applicant may rely on any alleged effect of blue and green that was not disclosed in the application as filed is to be decided as part of the assessment of inventive step (and see GL C-IV, 11.5.2, "As a matter of principle any effect provided by the invention may be used as a basis for the reformulation of the technical problem, as long as said effect is derivable from the application as filed (see T 386/89, not published in OJ).").

I don't agree that a disclaimer does not (i.e. never) define a new property of the subject-matter. Applicants add disclaimers for a reason: to overcome an objection. Objections under Art. 56 or 83 can only be overcome by defining a "new property" of the subject-matter. Those disclaimers can naturally not be allowed unless they have a basis in the application as filed.

The exception to this is discussed in G 1/03. If a disclaimer is used only to:
- restore novelty against an Art. 54(3) document;
- restore novelty against an accidental anticipation; or
- disclaim subject-matter excluded from patentability for non-technical reasons,
and if it is irrelevant for Art. 56 and 83, then it only cuts out subject-matter without defining any "new property". Such a disclaimer (if clear and concise and not removing more then necessary) does not require a basis in the application as filed.

The new referral (G 2/10) is concerned with the first type of disclaimers.

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