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16 December 2005
European Patent Office Enlarged Board of Appeal decision G01/04 sets approach for diagnostic methods
It is well known that the EPO takes a rigorous approach in examining amendments made during prosecution to ensure such amendments do not involve the addition of subject matter vis-à-vis the specification as filed contrary to EPC Art 123(2).
At the same time, disclaimers have long been used to introduce a negative feature into a claim during prosecution, so that certain embodiments are excluded from the scope of the claims. Disclaimers are commonly used in chemical and pharmaceutical cases in order to distinguish the invention from prior art that would otherwise invalidate the claim in its broadest sense.
In a combined decision G 1/03 of the Enlarged Board of Appeal in April 2004, the EPO clarified its position on the allowability of disclaimers during patent examination or opposition.
In these proceedings, the patent proprietors had used disclaimers in order to overcome novelty objections in relation to EPC Art 54(2) (where a document is citable for reasons of both novelty and inventive step) or EPC Art 54(3) & (4) (where a document is only citable for reasons of novelty, because the document has an earlier filing date, but is published after the filing date of an application in suit).
Established case law had allowed for the use of disclaimers having no basis in the application as filed, under certain circumstances (usually in order to overcome novelty objections). This practice had been called into question in the decision T 323/97 of the Technical Board of Appeal, which held that negative features introduced into a claim were amendments that had to be governed by EPC Art 123(2), i.e. that any amendments to a European patent or patent application may not contain subject matter that extends beyond that contained in the application as filed.
While T 323/97 related primarily to cases where it was sought to delimit a claim in light of an Art. 54(2) objection, there was no restrictions placed on its coverage. Consequently, the ruling extended to delimitations of documents cited under EPC Art 54(3). Due to the resulting uncertainty regarding the allowability of disclaimers, the Board of Appeal in the above cases saw it fit to refer the matter to the Enlarged Board of Appeal for clarification.
Findings of the Enlarged Board of Appeal
1. An amendment to a claim by the introduction of a disclaimer may not be refused under EPC Art 123(2) 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.
2. The following criteria are to be applied for assessing the allowability of a disclaimer which is not disclosed in the application as filed:
2.1 A disclaimer may be allowable in order to:
(a) restore novelty by delimiting a claim against state of the art under EPC Art 54(3) & (4);
(b) restore novelty by delimiting a claim against an accidental anticipation under EPC Art 54(2); 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
(c) disclaim subject-matter which, under EPC Art 52 to 57, is excluded from patentability for non-technical reasons.
2.2 A disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.
2.3 A disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to EPC Art 123(2).
2.4 A claim containing a disclaimer must meet the requirements of clarity and conciseness of EPC Art 84.
Practical Considerations
Condition 2.1(a) for the allowability of a disclaimer appears to broaden the scope for post-filing amendments at the EPO even for non-chemical or non-pharmaceutical cases. However, the implications for making amendments in the light of documents which are not "accidental anticipations" could in fact make the amendment regime even more rigorous. This applies in particular where a practitioner needs to direct an application towards a feature which is clearly different from a newly cited document, although one which might not have been considered very important on filing.
Take for example, the situation where a practitioner is considering amending a claim based on an embodiment of a circuit where an element is disclosed a being formed of copper, and it is necessary in the light of a citation to direct a claim to the distinguishing electrical characteristics of the element. One would expect that it might be possible for a claim to recite "... a conductive element..." as it is directly and unambiguously derivable to a skilled person that copper is conductive and that its function within the circuit is one which relies on its conductivity.
However, if the prior document disclosed a gold element and in order to distinguish from this disclosure, one wished to direct the claim towards a "light metal element", to cover say copper and (undisclosed) aluminium, an Examiner would be likely to argue that the amendment added subject matter because the skilled person would only consider the density of the element with the benefit of the prior document, in spite of the fact that copper has a well known density and that this would be directly and unambiguously derivable to a skilled person from the specification as filed.
Thus in practice, these decisions of the Enlarged Board place more pressure on practitioners to ensure that all language relating to a feature which might ultimately be required during prosecution is used in the specification as filed, an onus making an already difficult task more difficult.
