4.5.3 Disclaimer for escaping the exception to patentability under Article 53 c) EPC

One way of escaping the exception to patentability is a disclaimer, but the claim featuring the disclaimer must then meet all the EPC requirements (see also in this chapter I.B.4.4.5). In T 774/89 the board accepted the patentability of using a medication to increase milk production in cows, because it was evident that the success of the treatment did not depend on the animals' state of health, and the insertion in the claim of the term "non-therapeutic" served as a disclaimer, excluding the therapeutic effects of the medication.

According to T 1635/09 (OJ 2011, 542), the following applies to claims encompassing both therapeutic and non-therapeutic uses: a disclaimer "non-therapeutic" allows for the exclusion of therapeutic uses from a claim encompassing both therapeutic and non-therapeutic uses in such a way that they are substantively separable, so that the remaining subject-matter is no longer covered by the exception to patentability under Art. 53(c) EPC. However, such a disclaimer cannot be employed to define as non-therapeutic a use which – like that at issue in this case – necessarily includes one or more therapeutic steps, since the question whether or not a claimed use is therapeutic can be decided only in the light of the activities carried out, or the effects achieved, in the course of that use.

In T 385/09 the addition of the disclaimer "non-therapeutic" was accepted by the board, even though the difference between a therapeutic and non-therapeutic application of the method was not explicitly explained in any other manner. However, the board was satisfied that the application did contain teaching of a method which might have been regarded as therapeutic (cooling of cows in a heat stress), but also teaching of a method which was clearly not therapeutic (cooling of healthy cows for luring them to the milking stall).

In T 767/12 non-therapeutic and therapeutic methods for normalising infradian rhythm were considered indistinguishable. A disclaimer intended to restrict the claim to "non-therapeutic" methods was considered unallowable for lack of clarity under Art. 84 EPC (G 1/03, G 1/16) since it rendered the scope of the claim void.