Tuesday, 25 October 2016

T 437/14 - New Questions on Disclaimers referred to Enlarged Board

Is this still the same apple?

The disclaimer case G 1/03 seems to allow exceptions to Article 123(2) that 'Gold-standard' case G 2/10 does not allow. This board does not like it one bit:

"If one takes a bite out of an apple, what remains is recognisably no longer the same apple as the original one. Even though it is still an apple, the apple with the bite taken out of it cannot be regarded as explicitly or implicitly, but directly and unambiguously, "disclosed" in the original apple." (Reasons 8.1)
Claim 1 in this case includes two disclaimers to restore novelty against an accidental anticipation. This would be allowed under G 1/03. Is it also allowed under the more recent G 2/10? We will soon have a new enlarged board decision on disclaimers, joining the ranks of G 1/03 and G 2/10, because the following questions have been referred:

1. Is the standard referred to in G 2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC, i.e. whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed, also to be applied to claims containing undisclosed disclaimers?

2. If the answer to the first question is yes, is G 1/03 set aside as regards the exceptions relating to undisclosed disclaimers defined in its answer 2.1?

3. If the answer to the second question is no, i.e. if the exceptions relating to undisclosed disclaimers defined in answer 2.1 of G 1/03 apply in addition to the standard referred to in G 2/10, may this standard be modified in view of these exceptions?


Reasons for the Decision
(...)
7. Allowability of the disclaimers - applicability of G 1/03 and G 2/10
7.1 Claim 1 contains two disclaimers, namely
- a first disclaimer with the following wording:
"excluding the compounds having formula:

wherein the ligand FORMULA/TABLE/GRAPHIC is an alpha-amino acid residue selected from glycine, L-alanine, L-valine, D-leucine, L-proline, or L-phenylalanine,"
- and a second disclaimer with the following wording:
"and excluding the following compound:
"
7.2 It was undisputed that both disclaimers were undisclosed disclaimers.
7.3 In G 1/03 and G 2/03 (hereinafter, the present board will refer for simplicity to G 1/03 only) the Enlarged Board of Appeal considered undisclosed disclaimers to be allowable under Article 123(2) EPC:
"An amendment to a claim by the introduction of a disclaimer may not be refused 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" (answer No. 1).
The following criteria are to be applied when assessing the allowability of an undisclosed disclaimer (answer No. 2):
"2.1 A disclaimer may be allowable in order to:
- restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC;
- restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC; ...
- disclaim subject-matter which, under Articles 52 to 57 EPC, 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 Article 123(2) EPC.
2.4 A claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC."
These criteria, in the present board's understanding, define specific exceptions from the requirements of Article 123(2) EPC. Even though G 1/03 did not explicitly refer to "exceptions" in this context, later case law refers to the "exceptions" laid down in G 1/03 (see, e.g., T 1107/06, point 42 of the reasons).
7.4 In subsequent decision G 2/10 the Enlarged Board of Appeal established the standard to be applied for disclosed disclaimers. Hence, at first glance, G 2/10 does not apply to the present case. However, after a more careful analysis, things look different:
When determining the allowability of disclosed disclaimers under Article 123(2) EPC, the Enlarged Board of Appeal stated in G 2/10 that:
"The test to be applied is whether the skilled person would, using common general knowledge, regard the remaining claimed subject-matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed" (second paragraph of point 4.5.4 of the reasons; underlining added by the present board).
The Enlarged Board then went on to state in the next paragraph of G 2/10 that "This test is the same as that applied when the allowability of a limitation of a claim by a positively defined feature is to be determined", a test which was established in opinion G 3/89 and decision G 11/91, relating to amendments by way of correction (point 3 of the reasons of G 3/89 and G 11/91).
As pointed out in the last paragraph of point 4.3 of G 2/10, this definition "has become the generally accepted, one could also say the "gold" standard, for assessing any amendment for its compliance with Article 123(2) EPC".
7.5 Although the question referred to the Enlarged Board in G 2/10 concerned "disclosed disclaimers" only, there are numerous passages in G 2/10 which suggest that the gold standard applies to any amendment (including undisclosed disclaimers) when assessing its compliance with Article 123(2) EPC.
7.5.1 Thus, the Enlarged Board emphasised in the first paragraph of point 4.3 of G 2/10 that the gold standard as developed in opinion G 3/89 and decision G 11/91 had to be applied to any amendment without exception and irrespective of the context of the amendment made:
"The importance and the applicability, without exception, of Article 123(2) EPC was underlined in the jurisprudence of the Enlarged Board of Appeal as early as in its opinion G 3/89 and decision G 11/91 (OJ EPO 1993, 117 and 125, relating to amendments by way of correction). From these rulings it follows that any amendment to the parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in Article 123(2) EPC and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed, points 1., 1.3 and 3. of the Reasons" (underlining by the present board).
7.5.2 Furthermore, in G 2/10 the Enlarged Board observed in the last paragraph of point 4.3 that G 1/03 did not modify the general definition of the requirements of Article 123(2) EPC, i.e. the gold standard:
"... neither decision G 1/93 nor decision G 1/03 intended to modify the general definition of the requirements of Article 123(2) EPC established in opinion G 3/89 and decision G 11/91 ..."
This can, in the present board's view, only mean that the gold standard must also apply to undisclosed disclaimers as dealt with in G 1/03.
7.5.3 Lastly, in point 4.7 of G 2/10, the Enlarged Board addressed the President's suggestion that where the subject-matter remaining in the claim was not directly and unambiguously derivable from the application as filed, the criteria established in decision G 1/03 should be applied for the allowability of the disclaimer.
However, the Enlarged Board failed to see any justification for adopting such an approach, and stated:
"As can be derived from the Enlarged Board's position in the foregoing, in accordance with the principles developed in the above-cited earlier rulings of the Enlarged Board, the overriding principle for any amendment to be allowable under Article 123(2) EPC is that the subject-matter of an amended claim must be at least implicitly disclosed to the skilled person, using common general knowledge, in the application as filed. As has also been set out in the foregoing, that applies equally to the subject-matter of a claim the scope of which is determined by a disclaimer" (second paragraph of point 4.7 of the reasons).
7.6 Thus, taking the Enlarged Board's remarks in G 2/10 to their logical conclusion, this would mean that there is only one test to be applied for assessing any amendment, including an undisclosed disclaimer, for its compliance with Article 123(2) EPC, namely the gold standard. In other words, also for undisclosed disclaimers the relevant standard would be whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed.
7.7 The concept that there is only one standard, namely the gold standard, for assessing any amendment in a claim for compliance with Article 123(2) EPC is corroborated by the following considerations:
The Enlarged Board in G 1/03 justified the allowability of undisclosed disclaimers excluding subject-matter disclosed in an earlier application under Article 54(3) EPC by the legislator's intent, deduced from the legal history relating to Article 54(3) EPC,
"... to restrict the effect of the earlier application as far as possible in order to avoid unfairness resulting from the concept of a fictional publication" (last paragraph of point 2.1.1 of the reasons).
In a subsequent part of its decision the Enlarged Board extended this rationale to accidental anticipations (see in particular the second paragraph of point 2.2.2 of the reasons).
The present board notes that the legislator already restricted the effect of an earlier application under Article 54(3) EPC in the law itself, namely by the provision of Article 56 EPC that documents within the meaning of Article 54(3) EPC are not to be considered in deciding on inventive step. However, Article 123(2) EPC - unlike Article 56 EPC - has never contained, either in EPC 1973 or following the EPC 2000 revision, any special provisions for claims containing undisclosed disclaimers in view of documents within the meaning of Article 54(3) EPC. No legislative intent is thus derivable from Article 123(2) EPC that this type of amendment should be treated any differently from others.
The assumption of a legislative intent is even less tenable for undisclosed disclaimers against an accidental anticipation under Article 54(2) EPC. In particular, Article 123(2) EPC does not distinguish whether an amendment has been introduced in view of an accidental or a "non-accidental" anticipation. In fact, the definition of what is prior art in Article 54(2) EPC is absolute and does not distinguish between accidental and non-accidental anticipation. The provision states that:
"The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application."
7.8 In summary, the present board's conclusion from G 2/10 is that there is only one standard, namely the gold standard, for assessing any amendment, including undisclosed disclaimers, for compliance with Article 123(2) EPC.
This conclusion leaves no room for the exceptions defined in decision G 1/03, because also for undisclosed disclaimers the only relevant test would be the gold standard. Only if this standard is met would the disclaimer be allowable under Article 123(2) EPC.
However, even after extensively discussing G 1/03 and implying the relevance of the gold standard to undisclosed disclaimers, the Enlarged Board in G 2/10 did not set aside G 1/03 with regard to the exceptions relating to undisclosed disclaimers defined in answer 2.1 of that decision.
This raises the following fundamental questions of law for referral to the Enlarged Board of Appeal:
1. Is the standard referred to in G 2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC, i.e. whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed, also to be applied to claims containing undisclosed disclaimers?
2. If the answer to the first question is yes, is G 1/03 set aside as regards the exceptions relating to undisclosed disclaimers defined in its answer 2.1?
3. If the answer to the second question is no, i.e. if the exceptions relating to undisclosed disclaimers defined in answer 2.1 of G 1/03 apply in addition to the standard referred to in G 2/10, may this standard be modified in view of these exceptions?
8. Practical implications of applying the gold standard to undisclosed disclaimers
8.1 If the gold standard of G 2/10 were to be applied to claims containing undisclosed disclaimers (first question answered in the affirmative), then an undisclosed disclaimer would in the present board's view in most cases not be allowable under Article 123(2) EPC. A disclaimer excluding undisclosed subject-matter almost by definition contravenes Article 123(2) EPC.
If a whole is reduced by an undisclosed first part, the present board fails to see how the remaining second part could ever be regarded as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed. This can be illustrated by the following simple example: if one takes a bite out of an apple, what remains is recognisably no longer the same apple as the original one. Even though it is still an apple, the apple with the bite taken out of it cannot be regarded as explicitly or implicitly, but directly and unambiguously, "disclosed" in the original apple.
8.1.1 The present board is aware that in G 2/10 the Enlarged Board held that
"... any schematic reasoning solely suggesting that the introduction of the disclaimer modifies the subject-matter remaining in the claim because that amended claim contains less than the unamended claim would also not be sufficient to motivate an objection under Article 123(2) EPC" (second paragraph of point 4.5.3 of the reasons).
8.1.2 However, according to the Enlarged Board's own reasoning in G 2/10, the relevant question to be asked for disclosed (and undisclosed) disclaimers is whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed.
Even the proprietor acknowledged at the oral proceedings that, if one followed the gold standard of G 2/10 in that way, undisclosed disclaimers would no longer be allowable.
8.1.3 In this context, one may add that in G 1/03 the Enlarged Board stated the following:
"Any amendment to a claim is presumed to have a technical meaning, otherwise it would be useless to have it in the claim. In any event, a feature without a technical meaning would not restrict the scope of a claim" (second paragraph of point 2 of the reasons).
This statement was made to refute the most far-reaching argument brought forward in favour of undisclosed disclaimers, namely that it is a mere voluntary restriction by which the applicant abandons part of the claimed subject-matter and that, therefore, an undisclosed disclaimer per se is not a technical feature of the claim, and thus can never infringe Article 123(2) EPC.
Excluding subject-matter from a claim by way of an undisclosed disclaimer hence does change the technical content of the claim, so that in view of the gold standard it can be objected to under Article 123(2) EPC.
9. The case law after G 2/10
9.1 As apparent from the above, it is in the present board's view questionable whether or not undisclosed disclaimers have to pass the gold standard to be allowable under Article 123(2) EPC. The present board has therefore examined whether the case law after G 2/10 clarifies this issue.
9.1.1 In decision T 74/11 (point 4.8 of the reasons) the exceptions of G 1/03 were applied as sole criteria to undisclosed disclaimers. Even though this decision was issued after G 2/10, the gold standard was thus not applied.
9.1.2 To the board's knowledge, all other decisions have interpreted the remarks in G 2/10 as an instruction to apply the gold standard as a further test in addition to the principles set out in G 1/03.
9.1.3 In T 748/09 the board appears to have applied the gold standard in the way outlined in point 7.4 in conjunction with point 8.1 above, concluding that the undisclosed disclaimer did not meet this standard.
In the case underlying that decision, claim 2, simply put, referred to a medical implant or device at least partly fabricated from a metal alloy comprising (a) between 0.1 and 70 wt% of niobium, (b) between about 0.1 and 30 wt% in total of at least one element selected from zirconium and molybdenum, (c) up to
5 wt% in total of at least one element selected from hafnium, rhenium and lanthanides, and (d) a balance of tantalum. Furthermore, the claim contained a disclaimer reading "with the proviso that a metal alloy consisting essentially of 50 - 98.9% Nb, 0.5 - 5% Zr and
0.6 - 49.5% Ta is excluded." This disclaimer had been introduced to establish novelty over D1 which constituted prior art under Article 54(3) EPC. The board did not allow this disclaimer in view of the gold standard established in G 2/10, reasoning as follows:
" ... by introducing into claim 2 the compositional restrictions, which are exclusively based on document D1 rather than on the technical disclosure of the application, the skilled person is confronted with new subject-matter that he cannot derive clearly and unambiguously from the application as originally filed. To give an example, it is noted that the upper limit of less than 50% niobium now featuring in claim 1 is not disclosed anywhere in the application as filed and neither are the limits of less than 0.5% Zr and more than 5% Zr. It follows from the above considerations, that the disclaimer of claim 2 of the auxiliary request 1 does not satisfy the requirements of Article 123(2) EPC. Hence claim 2 of the new main request is not allowable"
(point 2.2.3 of the reasons).
9.1.4 However, even though referring to the gold standard, the boards in numerous further decisions, at least in the present board's view, have applied a somewhat modified gold standard (see underlined wordings below):
In T 2464/10, the board decided that a disclaimer of humans from animals ("non-human animal") passed the gold standard, in view of a disclosure in the application as filed of animals, preferably a mammal, and more preferably a transgenic pig or a transgenic sheep. In its reasoning, the board held that the limitation to non-human animals did not provide any new technical teaching and the skilled person was not presented in the application as filed with any new disclosure which went beyond the application as originally filed (point 8.1.1 of the reasons).
In T 1176/09, the board allowed an undisclosed disclaimer excluding human embryonic stem cells:
"The exclusion of human embryonic stem cells does not introduce a new technical teaching nor does it lead to the disclosure of any subject matter going beyond the application as filed. Therefore, the disclaimer also satisfies the condition set out in point 1a of the order of decision G 2/10 (OJ EPO 2012,376; cf. decision T 2464/10 of 25 May 2012)" (point 5 of the reasons).
In T 1872/14 (point 5.3.3 of the reasons), the board allowed a disclaimer excluding one specific composition from a claimed ophthalmic composition, which had been introduced into the claims to restore novelty over a document under Article 54(3) EPC. The board considered the disclaimer to meet the gold standard of G 2/10 since "the technical information presented to the skilled person has not been modified, in the sense that the disclaimer does not result in a singling out of a novel subgroup in the subject-matter remaining in the claim" and "since the identity of the claimed subject-matter has not been changed by said amendment" (underlining added by the present board).
In T 2018/08, the board decided that an undisclosed disclaimer ("ausgenommen Phleum pratense") met the gold standard established in G 2/10. The board reasoned that the claim still covered real subject-matter enabling the skilled person to carry out the invention and that there was no indication that he would have considered the subject-matter remaining in the claim after the disclaimer as not belonging to the invention:
"Damit umfasst Anspruch 1, nach Einführung des Disclaimers, noch immer einen realen Gegenstand, der die Erfindung und ihre Ausführung ermöglicht. Darüber hinaus gibt die Anmeldung keinen Hinweis, dass der Fachmann diesen verbleibenden Gegenstand in Anspruch 1 als nicht zur Erfindung gehörend erachtet hätte. Die Kammer schließt daraus, dass der im Anspruch verbleibende Gegenstand für den Fachmann in der ursprünglich eingereichten Anmeldung offenbart war und somit die Erfordernisse von Artikel 123(2) EPÜ im Lichte der Entscheidungen von G 1/03 und G 2/10 erfüllt sind" (point 3 of the reasons).
In T 1870/08, when deciding whether a disclaimer met the gold standard, the board examined, inter alia, whether (i) the subject-matter remaining in the claim after the disclaimer could plausibly be considered as belonging to the invention, (ii) it still solved the technical problem underlying the original invention, and (iii) the disclaimer did not provide the proprietor with any unwarranted advantage (fourth paragraph of point 4.6.7, point 4.7.1 and third paragraph of point 4.7.2 of the reasons).
9.1.5 At the very least, decisions T 2018/08 and T 1870/08 applied the gold standard in modified form, if at all:
For instance, in order to decide whether the remaining subject-matter in a claim still solved the technical problem underlying the original invention (one of the criteria applied in T 1870/08), the applicant or proprietor would have to show, e.g. by submitting comparative tests, that the effect(s) obtained by the remaining subject-matter of the claim was (were) the same as that (those) obtained before the disclaimer had been introduced. That is different from the gold standard, which for "normal" amendments has never made the requirements of Article 123(2) EPC dependent on any experimentally proven effect(s).
9.1.6 The present board has the impression that the discrepancy between, on the one hand, the gold standard of G 2/10 as outlined in point 7.4 in conjunction with point 8.1 above and as applied in T 748/09 and, on the other, a modified gold standard as applied at the very least in T 2018/08 and T 1870/08 is due to the fact that the boards in these decisions tried to find a way to accommodate the gold standard apparently required by G 2/10 without running counter to the ratio decidendi of G 1/03. This is in fact confirmed by T 1870/08, where the board in point 4.4.7 stated the following:
"This may convey the impression that the two decisions [G 1/03 and G 2/10] contradict, given that an undisclosed disclaimer - as part of the definition of the claimed subject-matter - could obviously not have been disclosed to the skilled person in the application as filed.
The board therefore needs to examine how the test as set out in G 2/10 is applicable in the present case without running counter to the ratio decidendi of G 1/03." (insertion in square brackets by the present board)
9.1.7 Hence, the case law after G 2/10 is not uniform as regards whether the gold standard is to be applied and, if so, what standard exactly needs to be applied for the allowability of undisclosed disclaimers under Article 123(2) EPC.
9.2 In summary, the fundamental question of law whether the findings in G 2/10 apply also to undisclosed disclaimers and the diverging case law following G 2/10 justify the referral questions.
10. Relevance of the referral questions for the outcome in the present case
10.1 If the gold standard is not to be applied to undisclosed disclaimers, i.e. the first referral question is answered in the negative, then the present board assumes that the exceptions to the requirements of Article 123(2) EPC as developed in G 1/03 apply.
10.1.1 The proprietor introduced the two disclaimers into claim 1 in order to disclaim novelty-destroying subject-matter disclosed in D5 (first disclaimer) and D7 (second disclaimer).
10.1.2 D5 relates to the synthesis of alpha-amino-carboxylate compounds including compounds 16 to 21 (page 192, left-hand column):

wherein the ligand FORMULA/TABLE/GRAPHIC is an alpha-amino acid residue selected from glycine (structure 16), L-alanine (structure 17), L-valine (structure 18), D-leucine (structure 19), L-proline (structure 20), or L-phenylalanine (structure 21).
The two phenyl-pyridine ligands correspond to ligand L and the amino acid residues to ligand X as defined in claim 1. The compounds disclosed in D5 thus have a structure as defined in claim 1. It was furthermore common ground between the parties that these compounds were phosphorescent as required by claim 1. The compounds disclosed in D5 would therefore be novelty-destroying to the subject-matter of claim 1, had they not been excluded by the first disclaimer.
10.1.3 D7 discloses on page 285 a compound Ir(MPPY)2PIC. The ligands MPPY correspond to ligand L and PIC to ligand X as defined in claim 1, so that the compound disclosed in D7 anticipates the structure as defined in claim 1. It was common ground between the parties that this compound was phosphorescent as required by claim 1. The compound disclosed in D7 would thus be novelty-destroying, had it not been excluded from claim 1 by the second disclaimer.
10.1.4 The proprietor argued that, since D5 and D7 - which are both prior art under Article 54(2) EPC - were accidental anticipations, the disclaimers were allowable under G 1/03.
10.1.5 It was common ground between opponent 1 and the proprietor that the two disclaimers met criteria 2.2 to 2.4 of answer 2 of G 1/03 (see point 7.3 above), and the board is satisfied that these criteria are indeed met. It was however a matter of dispute whether D5 and D7 were accidental anticipations (one of the criteria set out in answer 2.1 of G 1/03).
10.1.6 According to G 1/03, an anticipation is accidental if it is "so unrelated and remote that the person skilled in the art would never have taken it into consideration when working on the invention" (point 2.2.2 of the reasons). According to the Enlarged Board, a typical situation is the following: the claimed invention concerns a large group of chemical compounds with certain properties which are advantageous for a specific use. One single compound falling within the group turns out to be known for a completely different use and, therefore, only properties irrelevant to the new use are known (point 2.2.1 of the reasons).
10.1.7 D5 relates to the marking of peptides (fifth paragraph in the right-hand column of page 192). The compounds disclosed in D5 must thus bind to peptides to mark them, so that later, upon irradiation with light, they give a response, thereby revealing the proteins' presence. Consequently, what is needed in D5 is phosphorescence induced by radiation.
The technical field of marking peptides is entirely different from the patent's field, namely OLEDs. Furthermore, the property of being phosphorescent upon irradiation with light in D5 is irrelevant to the property aimed at in the patent for use in OLEDs, namely that of being phosphorescent when an electrical voltage is applied.
Opponents 1 and 3 argued that D5 disclosed that a characteristic of complexes 16 to 21 were strong metal-to-ligand charge transfer bands at 350 to 450 nm. This type of band was indicative of phosphorescence and thus relevant to the use intended in the patent. D5 was therefore not an accidental anticipation.
The opponents' argument is however not convincing. Even if one agrees with the opponents that the metal-to-ligand charge transfer bands disclosed in D5 are indeed indicative for phosphorescence, it is phosphorescence induced by light irradiation, whereas the patent aims at a different property, namely phosphorescence induced by an electrical voltage.
Hence, the technical field of D5 is entirely different from that of the patent and the properties disclosed in D5 are irrelevant for the use intended in the patent. The skilled person would thus never have taken D5 into consideration when making the invention.
D5 thus is an accidental anticipation under Article 54(2) EPC.
10.1.8 D7 is in the field of photochemistry and discloses that the complex IrMPPY2PIC described therein "may provide means of "tuning" the exited state redox potential by adjusting the pH" (last sentence of page 286 of D7). Thus D7 is in a different technical field from the opposed patent, namely that of compounds with photo-redox properties.
The opponents argued that on page 286 D7 disclosed that IrMPPY2PIC showed a "bright green glow" upon room-temperature UV radiation. Hence, D7 disclosed the property of emitting light and this was not irrelevant for the use in OLEDs as intended in the patent. However, in the same way as for D5, the light emission disclosed in D7 is phosphorescence induced by irradiation rather than by electrical voltage and thus is irrelevant to the use intended in the patent.
Therefore, the skilled person would never have taken D7 into consideration when making the invention. Hence, also D7 is an accidental anticipation under Article 54(2) EPC.
10.1.9 Consequently, also the criterion of answer 2.1 of G 1/03 for accidental anticipations is fulfilled. Hence, if the exceptions of G 1/03 apply, i.e. the first referral question is answered in the negative, the amendment introduced into claim 1 by the two disclaimers complies with Article 123(2) EPC.
10.2 If, on the other hand, the gold standard of G 2/10 is to be applied, i.e. the first referral question is answered in the affirmative, and in particular if it is to be applied in the way outlined in point 7.4 in conjunction with point 8.1 above, i.e. if the third referral question is answered in the negative, then in the present board's opinion the amendment introduced into claim 1 by the two undisclosed disclaimers is not allowable under Article 123(2) EPC. As set out above (point 8.1.2), this was even acknowledged by the proprietor.
10.3 If the gold standard of G 2/10 has to be applied in modified form, i.e. if the first and third referral questions are answered in the affirmative, one might accept the proprietor's argument that the two disclaimers are allowable since they reduce only slightly the broad genus of compounds covered by claim 1.
10.4 Thus, depending on the answers to the above referral questions, the two disclaimers in claim 1, and with it the main request, are allowable (if only the standard under G 1/03 has to be applied or if the gold standard is to be applied in modified form) or not (if the gold standard has to be applied as outlined in point 7.4 in conjunction with point 8.1 above), provided novelty over D57 and D58 can be acknowledged (see point 11 below).
(...)
Order
For these reasons it is decided that:
The following questions are referred to the Enlarged Board of Appeal for decision:
1. Is the standard referred to in G 2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC, i.e. whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed, also to be applied to claims containing undisclosed disclaimers?
2. If the answer to the first question is yes, is G 1/03 set aside as regards the exceptions relating to undisclosed disclaimers defined in its answer 2.1?
3. If the answer to the second question is no, i.e. if the exceptions relating to undisclosed disclaimers defined in answer 2.1 of G 1/03 apply in addition to the gold standard, may this standard be modified in view of these exceptions?
This decision T 0437/14 (pdf) has European Case Law Identifier:ECLI:EP:BA:2016:T043714.20161017. The file wrapper can be found here. Photo by stevepb via Pixabay under a CC0 license (no changes made).


12 comments :

  1. It was to be expected that the question about of the successive application of G 1/03 and G 2/10 would be referred to the EBA.

    G 1/03 applies to undisclosed disclaimers. They are used either to restore novelty over a prior art under Art 54 (3), or an accidental anticipation or on items that fall under an exception to patentability under Art 52 57 for non-technical reasons.

    G 2/10 applies to the disclaimers relating to embodiments of the invention. G 2/10 can be summarized as follows: If A-B is disclosed, a disclaimer for C-D (included in A-B) is only possible if A-C and D-B can be derived directly and unambiguously original documents.

    If after deciding according G 1/03 that the undisclosed disclaimer is admissible and well founded, then applying G 2/10 is like asking that what is left in the application or patent is directly and unambiguously derivable from the original disclosure.

    If the undisclosed disclaimer is on C-D applying G 2/10 leads to introduce the additional condition that A-C and D-B must be derivable directly and unambiguously original documents. Which is to say that the undisclosed disclaimer should actually be disclosed. As it is not in essence, and a fiction was created in G 1/03, making it patentable. The successive application of G 1/03 and G 2/10 could actually mean the death of G 1/03. This is the meaning of Question 2.

    In the cited decisions, T 748/09 concluded that the successive application of G 1/03 and G 2/10 makes disclaimer not patentable.
    Other decisions have come to the same conclusion, cf. T 336/12, T 1441/13. In T 1839/11, the BA denied admissibility of a late request because it did not want to discuss the “interplay” between G 1/03 and G 2/10, although it acknowledged that in T 2464/10 such disclaimers had been discussed and accepted. It also quoted T 1049/08.
    In all decisions T 1176/09, T 1872/14 and T 2018/08 the successive application of G 1/03 and G 2/10 showed that the disclaimers were patentable.

    It should be noted that in cases in which a disclaimer after application of G 1/03 + G 2/10 was considered patentable, the application of G 1/03 was for objects that fell under an exception to patentability under Article 52 to 57 for non-technical reasons.
    It is certainly a justifiable exception that might be part of the answer to question 3.

    However a disclaimer meant to restore novelty over a prior art under Art 54 (3), or an accidental anticipation, does not resist the successive application of G 1/03 and G 2/10. If the G 1/03 must retain some sense, here is another desirable exception, and a further possible answer to question 3. The applicant of the subsequent application cannot be penalized twice.

    The bets about the answers are open.

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  2. To me, applying a G 2/10-kind of criterion after applying G 1/03 seems to make no sense, as it misses the point of G 1/03 formulating an exception. On the other hand, to me, G 2/10 in itself does seem to make sense, since an application for an "apple" does not provide a basis for an "apple minus bite". I still wonder however, how G 2/10 relates to G 1/93. Why does the "bite" not count as a voluntary limitation? (When it only limits the scope, without a technical contribution?)

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  3. In my view, G1/93 has already put it quite well in the 2. headnote: "A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed in the sense of Article 123(2) EPC.".

    I take the position that this headnote (originally refering to "positive" features recited in a claim) should apply to disclaimers (reciting "negative" features in a claim) as well. Thus, the most important question to be asked in my view is whether the feature incorporated into a claim (be it positive or negative) has a technical contribution to the subject-matter of the claimed invention, i.e. is relevant for assessing inventive step and/or sufficiency of disclosure.

    If yes, it is inadmissible because then, the introduction of the feature would be an advantage for the applicant/proprietor which is not justified.

    If no, the introduced feature only Limits the scope of protection and in this case, the applicant/proprietor should have the freedom to do that (for whatever reason).

    By the way, I have the impression that the term "disclosed disclaimer" in the first question referred to the EBoA is a misnomer. In fact, it seems that an undisclosed disclaimer directed to a disclosed feature is meant (?). In my view, a disclosed disclaimer is e.g. if the original application states in a claim or the General part of the description: "In a preferred embodiment, the metal is a noble metal except gold". In this case, incorporation of this disclaimer should not violate A. 123(2) EPC. Moreover, this disclaimer may well have a technical contribution to the subject-matter of the claimed Invention (e.g. if all noble metals except gold have a special technical effect in the context of the claimed subject-matter).

    In any case, I am looking forward to the next decision of the EBoaA.

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    1. G2/10 is fairly recent (5 years old) and refers extensively to G1/03. Failing to overturn G1/03 was not an oversight. It seems unlikely they would reverse themselves so quickly. I therefore expect the discussion will turn on the technical contribution of the disclaimer, or lack thereof.

      On linkedin someone has the interesting comment that, “a claim is not an apple, but a bag of apples. A disclaimer takes one apple out of the bag, while leaving the other apples unaffected.”

      The exceptions in G1/03 cannot play a role in inventive step. They remove an apple from the bag. A disclaimer that has a technical contribution takes a bite out of the apple. You are left with something else then before. In this case, the disclaimer must be derivable from the application.

      G 1/93 seems to say that non-technical limitations are always ok. But I don’t think applicants who relied on this to defend their added subject matter problems have fared very well in the past. If the enlarged board does not overturn G1/03 do they then run the risk of breathing new live in G1/93 with a relaxed interpretation of A.123 as the result?

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  4. Part answer 1

    I doubt that the EBA will breathe new life in G 1/93 and overturn G 1/03.

    In G 3/14 the EBA did not overturn the long standing case law on clarity in opposition. It just confirmed the standard that in opposition, clarity can only be considered in the light of amendments, whereby the clarity of a combination of granted claims cannot be challenged.

    It should be remembered that G 1/93 is the decision on the inescapable trap. When one sees the way case law of the BA related to added subject-matter has become more severe with the year, I doubt that a relaxed interpretation of Art 123(2)will come out of this referral. The line of case law will be confirmed, certainly not weakened, although this is a wish of many representatives and applicants/proprietors. That some divisions have become very formalistic in the matter and have to be brought on the right track is a different matter which cannot be equated with a relaxed interpretation of Art 123(2).

    In G 1/03 the BA held that a disclaimer restoring novelty vis-à-vis a prior art under Art 54(3) (Reasons 2.1.3) or an accidental anticipation (reasons 2.2.2) makes no technical contribution to the invention as claimed, so that it does not infringe Art 123(2) and is in line with G 1/93. The same applies to exceptions to patentability under Art 52-57. Any other disclaimer makes a technical contribution.

    Thinking of disclaimers not making a contribution and to keep might not be wrong, but I doubt this would help solving the problem.

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  5. Part answer 2

    If one takes the example given of the apple given by the BA we could think along the following lines:

    1) When applying G 1/03, i.e. the undisclosed disclaimers, then a chunk has to be taken off the apple.

    1.a) That chunk can correspond first to a piece of prior art under Art 54(3) or to an accidental disclosure, and the disclaimer is there to restore novelty.

    1.b) The chunk can also correspond to subject-matter excluded from patentability for non-technical reasons, i.e. according to Art 52 to 57.

    1.c) In both cases the apple is not the same after having taken the chunk out. Strictly speaking, the dimension of the chunk was not known in advance, so there is actually added subject-matter, but the EBA created a fiction by stating that the chunk taken out does not make a technical contribution to the apple.

    1.d) This is however not what matters as the EBA has created a fiction, the undisclosed disclaimer. When the undisclosed disclaimer relates to subject-matter excluded from patentability for non-technical reasons, then G 2/10 could apply, although as such it could possibly not have been part of the original disclosure, but refers to the "golden standard".

    2) When applying G 2/10, the chunk as also to be taken out the apple. What G 2/10 says is that the boundaries of the chunk have to be known in advance, otherwise there is added matter. This is perfectly coherent.

    2.a) When the chunk taken out of the apple corresponds to subject-matter excluded from patentability for non-technical reasons, i.e. according to Art 52 to 57, then in my opinion G 2/10 should apply.

    2.b) For example, if a method can be used as a medical method, as well as in a non-medical field, then the applicant/proprietor can only limit himself to the non-medical part and disclaim the medical method if the non-medical use was disclosed as such in the original disclosure. If the non-medical use was not disclosed as such, then claiming the non-medical part of the method is indeed not directly and unambiguously derivable from the original disclosure.

    2.c) If like in T 780/89 ( Bayer), T 116/85 ( Pigs I, Wellcome), or T 144/83 (Naltrexone) when the non-medical effect is distinguishable, then a disclaimer might not even be necessary, see T 469/94 (MIT) or T 36/83 (Roussel-Uclaf).

    2.d) If the medical and non-medical effects cannot be distinguished, than a disclaimer for the non-medical part is in any case not allowable. I refer to various old decisions like T 290/86 (Blendax), T 820/92 (General Hospital), T 438/91 (Meiji),

    3) If the both the medical and non-medical application have been disclosed, then disclaiming the medical part under G 1/03 is perfectly applicable. What is left has however to have been disclosed originally, i.e. the successive application of G 1/03 and G 2/10 makes sense.

    In that respect I would like to draw attention to a decision of the "Cour d'Appel de Paris“ ( 4th Chamber, 29.10.97). The use of a laser for opening of the root canal of a tooth was only disclosed in this context. The applicant explained that any obstruction in any type of conduit, not just the root canal of a tooth, but this was not disclosed. Here G 2/10 would have been perfectly applicable.

    4) The successive application of G 1/03 and G 2/10 does not make any sense when we are in presence of a non-disclosed disclaimer meant to restore novelty according to G 1/03.

    4.a) If this would be the stance adopted by the EBA, then indeed G 1/03 is dead. I however do not see that the EBA will easily throw over board a long line of case law about undisclosed disclaimers.

    4.b) That some jurisdictions in Contracting States have not accepted them is a different matter.

    No need to refer to a bunch of apples, on apple with chuck taken out is good enough to define the problem and find a solution.

    The bets are still open!

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    1. > The bets are still open!

      I've added an (anonymous) poll to the front page. So anyone who thinks he can predict the Enlarged board can enter the poll.

      Have I missed a possible response? Let me know.


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  6. "In G 1/03 the BA held that a disclaimer restoring novelty vis-à-vis a prior art under Art 54(3) (Reasons 2.1.3) or an accidental anticipation (reasons 2.2.2) makes no technical contribution to the invention as claimed, so that it does not infringe Art 123(2) and is in line with G 1/93. The same applies to exceptions to patentability under Art 52-57. Any other disclaimer makes a technical contribution."

    To me, it is more the other way around: the board held "54(3) disclaimers" and "52-57 disclaimers" that do not make a technical contribution not unallowable. This does not mean, that any disclaimer meant as a "54(3) disclaimer" or a "52-57 disclaimer" is by definition allowable. That depends on whether or not they make a technical contribution.

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    1. Adding:

      In case a technical contribution is made, a disclaimer is not allowed, even in the case that the disclaimer restores novelty vis-a-vis a prior art document under 54(3), or if it disclaims unpatentable subject matter.

      In case of an accidental anticipation, a technical contribution is not allowed either. In that case, however, the "technical contribution" discussion is held in terms of whether or not the anticipation is accidental. A disclaimer to "accidental" subject matter by definition lacks a technical contribution, as the subject matter would not have been considered by the skilled person anyway.

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  7. I agree with the comment of 18:37. A change of standard in the appreciation of added subject-matter is not going to happen - think also of the ricochet effect on e.g. novelty. I am also very unconformtable with the discussion on features making a technical contribution and those which do not; that smells like the snackfood case law to me; G2/98 also said "a distinction is made in decision T 73/88 [...] between technical features which are related to the function and effect of the invention and technical features which are not. This approach is problematic because there are no suitable and clear, objective criteria for making such a distinction; it could thus give rise to arbitrariness" (of course for priority but the test should be the same for 123(2)). G1/93 is better left to case of A.123(2)/(3) traps in my mind.
    All that to say: I have now idea how the EBoA will sort this out. Unfortunately they are unlikely to question the application of G2/10 to G1/03 undisclosed disclaimers, because that is how the BoAs unanimously read G2/10. What will have to be defined is how both can be applied at the same time, i.e. what is the test. Pls note, G2/10 says the A.123(2) “golden standard” always applies, but the criteria it defines (nature and extent of original disclosure, nature and extent of the disclaimed part + relationship with remaining s.m.) deviates quite a bit from the traditional A.123(2) test...

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  8. Maybe a way to bring all three G decisions together is to
    1. maintain the gold standard to assess compliance with A. 123(2) EPC and confirm that any amendment (be it the addition of a positive Feature or a negative feature) to a claim which does not pass the test violates the requirements of A. 123(2) EPC; and
    2. rule that any amendment violating A. 123(2) may still be admissible in the case it does not have a technical contribution, i.e. in other words a legal fiction is created which deems the amendment admissible in such a case (see also G1/93, 2nd heatnote: "...is NOT TO BE CONSIDERED as subject-matter which extends beyond the content of the application as filed in the sense of Article 123(2) EPC").

    In my view, the solution could form a Bridge between all three G decisions, but it still suffers the problem that it would have to be defined what a technical contribution actually is (in each case). Once this is defined, a further disadvantage seems to be that a discussion about rather formal requirements extends to a discussion about rather substantial requirements.

    It remains exciting what is to come...

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    1. I'm looking forward to the decision as well. It will be interesting to see how they manage this one.

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