Disclaimer (patent)

Disclaimer (patent)

In patent law, a disclaimer are words identifying, in a claim, subject-matter that is not claimed.[1] By extension, a disclaimer may also mean the action of introduction a negative limitation in a claim, i.e. "an amendment to a claim resulting in the incorporation therein of a "negative" technical feature, typically excluding from a general feature specific embodiments or areas".[2] The allowability of disclaimers is subject to particular conditions, which may vary widely from one jurisdiction to another.

Contents

European Patent Office (EPO)

Under the case law of the Boards of Appeal of the EPO, disclaimers are allowed only in certain circumstances, as confirmed in G 1/03 and G 2/03 decisions.

"A disclaimer [which is not disclosed in the application as filed] may be allowable in order to:
  • restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC;[3]
  • restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC; an anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention; and
  • disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons." [4]

The reasoning of G 1/03 and G 2/03 applies to disclaimers which are not disclosed in the application as filed. In other words, these decisions relate to "(originally) undisclosed disclaimers".[5]

According to decisions T 1050/99 of 25 January 2005, even if there is a disclosure of the subject-matter being disclaimed, the disclaimer may still qualify as an "undisclosed disclaimer":

"Thus, there is a basis in the application for the subject-matter which is excluded in the claim. However, that subject-matter is presented as a part of the invention, not as an area which should be excluded or avoided. In this sense, the disclaimer is in fact an "undisclosed" disclaimer because there is no disclosure in the application as filed of the disclaimer per se." [6]

Likewise, according to T 1559/05 of 15 November 2007, for a disclaimer to qualify as a "disclosed disclaimer" thus allowable under Article 123(2) EPC, it is not sufficient that the feature which is the subject of the disclaimer be disclosed in the application as filed. The negative limitation introduced into the claims, which could be for instance "... with the proviso that said plastic material is not TPX 4-methylpentene-1 polymer from Mitsui Petrochemical Industries, Japan",[7] must be disclosed in the application as filed as a disclaimer.[8]

In contrast,[9] in decision T 1139/00 of 10 February 2005 [10] (in line with the European qualifying examination (EQE) Examiners’ Report for paper B 2005, Chemistry part [11]), the Board held that it was sufficient that the subject-matter excluded by the disclaimer be supported by the application as filed for it to be allowable under Art. 123(2) EPC. In other words, the Board held that decisions G1/03 and G2/03 were not relevant when the subject of the disclaimer is disclosed in the application as filed, even if not disclosed as a disclaimer.

In view of the divergent decisions (on the one hand, e.g. T 1050/99 and T 795/05, and, on the other hand, e.g. T 1107/06 and T 1139/00), the following question has been referred by Board of Appeal 3.3.08 to the Enlarged Board of Appeal (under Article 112(1)(a) EPC): "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?".[12] The case has received the number G 2/10.[13]

References

  • European patent law:
    • Guidelines for Examination in the EPO c.iii.4.20 : Negative limitations (e.g. disclaimers)
    • Guidelines for Examination in the EPO c.vi.5.3.11 : Disclaimers not disclosed in the application as filed
    • Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (sixth edition 2010), iii.a.4 : Amendments, disclaimers
    • Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (sixth edition 2010), i.d.8.14 : Inventive step, disclaimer
    • Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (sixth edition 2010), ii.b.1.2.1 : Clarity, disclaimers
  • Patentability of Negative Limitations at the USPTO MPEP 2173.05(i) Negative Limitations - 2100 Patentability

Notes

  1. ^ Decision G 2/10 of the Enlarged Board of Appeal of the European Patent Office, August 30, 2011, Reasons for the decision, point 2.1.
  2. ^ Decision G 2/10, August 30, 2011, Reasons for the decision, point 2.2.
  3. ^ For an application of this principle, see Decision T 33/06 of 18 September 2007. Reasons 2.3:
    "The disclaimer... does not only delimit ... against [the] state of the art under Article 54(3) EPC but against more subject-matter than defined in [the state of the art document] as being novelty destroying. Hence, the subject-matter now excluded ... extends beyond the relevant passage serving as a basis in [the state of the art document] for the exclusion.
    Hence, the amendment has a bearing on the technical information disclosed in the specification, and the patent has been amended in a way that it extends beyond the content of the application as filed.
    It follows that the patent in suit contravenes Article 123(2) EPC."
  4. ^ G 1/03 and G 2/03
  5. ^ See for instance: Decision T 0154/06 of 11 January 2008, Reasons 4.
  6. ^ Decision T 1050/99 of 25 January 2005, Reasons 7(c).
  7. ^ To take the example of Decision T 1559/05 of 15 November 2007, Reasons 2.1.1.
  8. ^ Decision T 1559/05, Reasons 2.2.2
  9. ^ (French) Laurent Teyssedre, T1559/05 - G1/03 s'applique au cas de l'exclusion d'une partie de l'invention, Le blog du droit européen des brevets, March 22, 2008. Consulted on March 22, 2008.
  10. ^ Decision T 1139/00 of 10 February 2005, Reasons 2.3:
    "It follows both from the questions put to the Enlarged Board as well as from the Order of G 1/03 that this decision concerns only the situation where the subject-matter excluded from the scope of a claim did not have a basis in the application as filed."
  11. ^ See Examiners’ Report - Paper B (Chemistry), page 3:
    "The basis for excluding sodium citrate was found in the application e.g. in claims 3 and 4 where blending sodium percarbonate with sodium citrate is explicitly disclosed. The decisions G1/03 and G2/03 were not relevant since these decisions relate to undisclosed disclaimers." (Paper B Ch)
  12. ^ Interlocutory decision of the Technical Board of Appeal 3.3.08 of 25 June 2010
  13. ^ EPO web site, Referrals pending before the Enlarged Board of Appeal. Consulted on August 13, 2010.

See also


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