Nuances in the definition of accidental anticipation (T 1218/14)

A recent EPO board of appeal (BA) decision T 1218/14 applied the criteria for the allowability of amendments relating to undisclosed disclaimers. The BA provided some interesting commentary on the definition of "accidental anticipation" as a criteria for when an undisclosed disclaimer may be allowed.

A disclaimer is a claim amendment that introduces a negative technical feature. Disclaimers are a special case in which subject matter not disclosed in the application as filed may be introduced into a claim without contravening the EPO's strict added matter requirements (Article 123(2) EPC). The allowability of disclaimers in patent claims has a controversial history at the EPO. The Enlarged Board of Appeal (EBA) has considered the issue a number of times. G 1/03 and G 1/16 established that an undisclosed disclaimer may be introduced into the claims to restore novelty in view of an accidental anticipation. An accidental anticipation is anticipation of a claim by something completely unrelated to the invention in question. As recently confirmed in T 1218/14, the threshold for what constitutes an "accidental anticipation" is a high one.

Beer!

The patent (EP1812548) at issue in T 1218/14 related to the method of preparing a beverage, e.g. beer, having reduced gluten content. Beer made from cereals normally contains gluten and is not suitable for celiac disease sufferers. Granted claim 1 (and the Main Request in appeal) related to a method by which the gluten content of a beverage or beverage additive was reduced by a cross-linking enzyme.

The patent was revoked for lacking novelty during opposition. The board of appeal (BA) (3.3.02) agreed with the opposition division that claim 1 of the Main Request lacked novelty in view of a prior art document D1 (WO 02/15713). D1 related to a method for processing wheat flour dough containing a cross-linking enzyme to make a syrup. the BA considered a syrup to be a beverage additive.

In appeal, the proprietor submitted an auxiliary request (Auxiliary Request 1) in which claim 1 was amended to disclaim the process described in D1 (an "undisclosed disclaimer"). The BA considered whether the introduction of this disclaimer satisfied the requirements of Article 123(2) EPC. The proprietor argued the the disclaimer satisfied one of the criteria for the allowability of an undisclosed disclaimer provided by G 1/03 and confirmed by G 1/16. In particular, the allowability of a disclaimer delimiting a claim against an accidental anticipation.

What counts as an accidental anticipation?

The BA summarised G 1/16 and G 1/03 as establishing that:

an anticipation is accidental if from a technical point of view it is so unrelated and remote that the person skilled in the art would never have taken it into consideration when making or working on the invention. In addition...the accidental disclosure should be completely irrelevant for assessing inventive step

In the case in question, the BA found that D1 related generally to a different field of investigation to that of the claimed invention: the field of flours versus the field of beverages (r. 2.3.1). However, the BA found that D1 none-the-less dealt with, "in a side aspect", the production of a beverage additive. Particularly, D1 mentions that "[t]here are a vast number of areas in which starches may be applied, such as glucose syrup production and in sweetening production in general". The BA reasoned that a skilled person would consider such a sweetening product to be suitable as a beverage additive. Thus, the board did not consider the anticipation to be "accidental". The claim was therefore found to add matter and contravene Article 123(2) EPC.

Interestingly, the BA found that the invention was inventive in view of a combination of the closest prior art and inter alia D1 (r. 6.3.5). D1 was therefore considered irrelevant for inventive step but not irrelevant enough to be an accidental anticipation. So was the BA's finding on inventive step in fact compatible with the BA's previous finding that D1 was not an accidental anticipation? As commented by the BA itself:

the finding that the claimed subject-matter is inventive in view of D1 as a secondary document may lead to the conclusion that D1 is irrelevant to inventive step. This may in turn be interpreted such that the criterion in G 1/03 that an accidental anticipation should be completely irrelevant for assessing inventive step is met and that hence D1 is an accidental anticipation.

However, the BA reasoned to the contrary that the definition of "accidental anticipation" does not require that a document is relevant to inventive step. In particular:

the requirement in G 1/03 that an accidental novelty-destroying disclosure has to be completely irrelevant for assessing inventive step is to be understood not as an alternative, or additional criterion, but as a consequence of the criterion that, from a technical point of view, said disclosure is so unrelated and remote that the person skilled in the art would never have taken it into consideration when making or working on the invention. 

The BA decision in T 1218/14 therefore provides an interesting nuance to the criteria under which an undisclosed disclaimer will be allowed. Particularly, the test is not whether the previous disclosure may be considered for the purposes of inventive step. The test is a higher one than this. The disclosure must be so removed from the invention that it would never be considered for inventive step or even thought about at all in relation to the claimed invention.

D1 could at most be said to be relevant to the field of beverage additives, but not to beverages. Therefore, whilst the first auxiliary request failed, the decision to revoke the patent was set aside on the basis of auxiliary request IV, which limited the claims to "a beverage".