1.7.2 Standards for examining disclosed and undisclosed disclaimers
Overview
1.7.2 Standards for examining disclosed and undisclosed disclaimers
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In G 1/16 (OJ 2018, A70) the Enlarged Board considered that the choice of the proper test for assessing the allowability of any disclaimer is determined by the fundamental distinction, in terms of their legal nature, between disclosed disclaimers and undisclosed disclaimers. That distinction necessitates providing for each of the two classes of disclaimer a single specific test for assessing whether the introduction of a given disclaimer is in compliance with Art. 123(2) EPC. Therefore, for undisclosed disclaimers the proper test is whether the criteria of G 1/03 (OJ 2004, 413) are fulfilled, and for disclosed disclaimers the proper test is the gold standard disclosure test of G 2/10 (OJ 2012, 376).
With regard to the admissibility of disclaimers, reference should also be made to chapter II.D.3.1.2.
- T 1525/15
Implicitly disclosed disclaimer (see point 4 of the reasons)
- Case law 2020
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In T 1525/15 the appellant's objection related to a negative feature (or disclaimer) of both independent claims ("free of a micro-embossing design"). The board observed that there was no verbatim disclosure of this feature in the original application. The feature was added during the grant proceedings to establish novelty over document D1, which was state of the art according to Art. 54(3) EPC. The board emphasised that such an amendment was allowable: – if the negative feature was implicitly disclosed as such in the original application; or - if the disclaimer was undisclosed in the original application but complied with the requirements formulated in decision G 1/03 (OJ 2004, 413) of the Enlarged Board of Appeal. In the case in hand the board came to the conclusion that the negative feature was implicitly but nevertheless directly and unambiguously disclosed in the original application. Incidentally, the board also noted that the relevant test for the assessment of amendments was the so-called "gold standard" test (see G 2/10, OJ 2012, 376); the test known as the "novelty test", which was sometimes used in the early days of the boards of appeal, was no longer used (see Case Law of the Boards of Appeal, 9th ed. 2019, II.E.1.3.7). As the negative feature was disclosed as such in the original application, it was not necessary to examine whether the conditions set out in decision G 1/03 (and confirmed in G 1/16, OJ 2018, A70) were fulfilled.