1.7. Disclaimer

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. 

In T 1218/14 the board clarified the meaning of the criterion mentioned in G 1/03 (OJ EPO 2004, 413) that an accidentally novelty-destroying disclosure had to be completely irrelevant for inventive step. The finding that the claimed subject-matter was inventive in view of D1 as a secondary document did not mean that D1 was irrelevant to inventive step within the meaning of this criterion. This criterion had to be understood not as an alternative, or additional criterion, but as a consequence of the criterion in G 1/03 and G 1/16 (OJ EPO 2018, A70) that, from a technical point of view, said disclosure was so unrelated and remote that the person skilled in the art would never have taken it into consideration when making or working the invention.

In G 1/16 (OJ EPO 2018, A70) the Enlarged Board had endorsed the concept that the undisclosed disclaimer may not be related to the teaching of the invention and specified that the question to be asked in this context is not whether an undisclosed disclaimer quantitatively reduces the original technical teaching – this is inevitably the case – but rather whether it qualitatively changes it in the sense that the applicant's or patent proprietor's position with regard to other requirements for patentability is improved.

In T 660/14 claim 1 of auxiliary request 4 contained two additional features according to which the operating and control members of the claimed bicycle control device were pivotable about non-common offset axes and were not pivotable commonly about either of the offset axes. The board, applying the criterion of G 1/03 (OJ EPO 2004, 413) as interpreted by G 1/16 (OJ EPO 2018, A70), considered that the disclaimers provided a technical contribution to the subject-matter disclosed. Claims 7 and 8 as filed addressed the operating member and the control member being arranged to be pivotable about parallel and/or offset axes. As indicated in the description, this may be seen as providing ergonomic advantages. The board concluded from this that the disclaimers introduced a technical difference to the amended claim when compared to the content of the original application. The pivotable arrangement of the operating and control members about the axes was of a technical nature, not least through the disclosure of the ergonomic benefits; the board concluded the disclaiming of this arrangement would have to be as well. The board held that this finding was furthermore confirmed by considering whether merely a quantitative change to the original technical teaching had occurred or indeed whether a qualitative change had resulted from the introduction of the undisclosed disclaimers (G 1/16). By disclaiming both common offset axes and common pivoting about either of the offset axes, the ergonomic considerations identified in the application as filed had been modified, resulting in a qualitative change to the originally disclosed technical teaching in the sense that the proprietor's position with regard to inventive step would be changed.

In T 437/14, taking into account the answers to the questions on undisclosed disclaimers which it referred to the Enlarged Board in case G 1/16 (OJ EPO 2018, A70), the board recalled that, for undisclosed disclaimers, the proper test is whether the criteria of G 1/03 (OJ EPO 2004, 413) are fulfilled. The gold standard test referred to in G 2/10 (OJ EPO 2012, 376) is not the relevant test. The board had already decided in its interlocutory decision of 17 October 2016 that the disclaimers inserted into claim 1 were undisclosed disclaimers, that they established novelty over accidental anticipations under Art. 54(2) EPC and that they did not remove more than what was necessary to restore novelty over those documents. In the present decision the board further considered that there was no evidence that the disclaimers provided a technical contribution adding subject-matter extending beyond the content of the application as filed. In particular, the board noted that no evidence had been put forward by the opponents, and the board did not see any either, that the limitation of the genus of compounds covered by the formula in claim 1, which resulted from the excision of the seven specific compounds defined in the disclaimer, became relevant for establishing inventive step or sufficiency of disclosure. Accordingly, the disclaimers also met the conditions laid down in points 2.6 and 2.6.1 of the Reasons for the decision in G 1/03, and in the second paragraph of the Order of G 1/16. Concerning the aspect of validity of the priority right and novelty, see also chapter II.D.3.1.