BOARDS OF APPEAL
Decisions of the Enlarged Board of Appeal
Communication from the Enlarged Board of Appeal concerning cases G 1/03 and G 2/03
In decision T 0507/99 (92116446.3), Technical Board of Appeal 3.3.5 and in T 0451/99 (86902998.3), Technical Board of Appeal 3.3.4 referred questions relating to the allowability of disclaimers to the Enlarged Board of Appeal. The cases are being handled as case numbers G1/03 and G2/03 and are consolidated.
In case G 1/03 (T 0507/99) the questions referred are:
1. Is an amendment to a claim by the introduction of a disclaimer unallowable under Article 123(2) EPC 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. If the answer to question 1 is no, which criteria are to be applied in order to determine whether or not a disclaimer is allowable?
(a) In particular, is it of relevance whether the claim is to be delimited against a state of the art according to Article 54(3) EPC or against a state of the art according to Article 54(2) EPC?
(b) Is it necessary that the subject-matter excluded by the disclaimer be strictly confined to that disclosed in a particular piece of prior art?
(c) Is it of relevance whether the disclaimer is needed to make the claimed subject-matter novel over the prior art?
(d) Is the criterion applicable that the disclosure must be accidental, as established by prior jurisprudence, and, if yes, when is a disclosure to be regarded as being accidental, or
(e) is the approach to be applied that a disclaimer which is confined to disclaiming the prior art and has not been disclosed in the application as filed is allowable under Article 123(2) EPC, but that the examination of the subject-matter claimed for the presence of an inventive step has then to be carried out as if the disclaimer did not exist?
In case G 2/03 (T 0451/99) the questions referred are:
Is the introduction into a claim of a disclaimer not supported by the application as filed admissible, and therefore the claim allowable under Article 123(2) EPC, when the purpose of the disclaimer is to meet a lack-of-novelty objection pursuant to Article 54(3) EPC?
If yes, what are the criteria to be applied in assessing the admissibility of the disclaimer?
The text of the referred decisions is available on the Webside of the European Patent Office www.epo.org unter New Boards of Appeal decisions - List of Cases of the Enlarged Board of Appeal - List of pending cases... . Publication of the decisions together with the translations into the two other official languages is expected to appear in OJ EPO No. 6/03. For file inspection, please make use of the EPO internet facility: www.epoline.org.
The Enlarged Board of Appeal considering the referrals will be composed as follows:
P. Messerli (Chairman), R. Teschemacher, C. Andries, G. Davies, B. Jestaedt, A. Nuss, J.-C. Saisset.
It is expected that third parties will wish to use the opportunity to file written statements in accordance with Article 11b of the Rules of Procedure of the Enlarged Board of Appeal (OJ EPO 1994, 443). To ensure that any such statements can be given due consideration without holding up the proceedings more than necessary, they should be filed by the end of July 2003, quoting case numbers G1/03 and G2/03.