In its decision G 1/03, the jurisdiction of the European Patent
Office ("EPO"), in particular the Enlarged Board of
Appeal, has developed a possibility to disclaim novelty-destroying
subject matter disclosed in prior art under Article 54(3) EPC,
i.e., prior art filed before, but published after, the filing date
of an application in question.
According to G 1/03, such "a disclaimer should not remove
more than is necessary to restore novelty" as "the
necessity for a disclaimer is not an opportunity for the applicant
to reshape his claims arbitrarily" (G 1/03, reasons point 3).
In view of this requirement, it is necessary to formulate a
disclaimer that does not deviate in scope from the subject matter
anticipated. This is generally achieved by using the same wording
used in the prior art under Article 54(3) EPC.
In the same decision, the Board also held that a claim containing
a disclaimer must meet the requirements of clarity and conciseness
of Article 84 EPC, which is a formal requirement for the claims
only.
Situations may now arise where there is a need for excluding
novelty-destroying subject matter disclosed in prior art under
Article 54(3) EPC and where the wording used in the prior art does
not conform with the requirements under Article 84 EPC. Under these
circumstances, the applicant may find himself in an inescapable
trap where an unclear wording of the prior art to be disclaimed
deprives the applicant of the possibility to draft an admissible
disclaimer in order to restore novelty of the claimed subject
matter.
The Board of Appeal 3.3.07 has now confirmed, in its decision T
2130/11, that formulating an allowable undisclosed disclaimer
cannot justify an exception in the application of Article 84 EPC.
Accordingly, it has been clarified that Article 84 EPC applies to
the wording of undisclosed disclaimers in the same way as for any
other feature of a patent claim.
This decision is based on a case in which the disclaimer was to be
formulated by literal reproduction of the wording of the
novelty-destroying examples disclosed in an Article 54(3) EPC
document. These examples included references to other patents and
to trademark designations for certain substances and, hence, were
in disagreement with the requirements of Article 84 EPC.
It is readily apparent that such inescapable trap, based on events
outside the applicant's influence, would be dissatisfying and
potentially contradict the intention of the Enlarged Board of
Appeal in G 1/03. Fortunately, in the same decision T 2130/11, the
Board has formulated a possible escape route for applicants facing
the situation described above.
In order to show applicants a way to avoid the inescapable trap
mentioned above, the Board interpreted the statement of G 1/03
under point 3 of the reasons, third paragraph, that "Article
84 EPC may require that the terminology [of the anticipation] be
adapted in order to exclude what is necessary to restore
novelty" in such a way that deviations from prior art wording
be permissible if they serve to avoid lack of clarity. In other
words, a deviation from the original wording leading to "a
disclaimer removing more than strictly necessary to restore
novelty," if required to satisfy Article 84 EPC, would not
automatically lead to an arbitrary reshaping of the claims and,
hence, be in agreement with the spirit of G 1/03.
Practically, this means that it is possible to formulate an
undisclosed disclaimer and, in order to satisfy the requirement of
Article 84 EPC, deviate from the original wording of the disclosure
in the conflicting prior art, even if this means that more is
removed from the claims than would have been necessary.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
