tag:blogger.com,1999:blog-8990057754240336385.post5761047053227195852..comments2024-02-27T09:18:36.160+01:00Comments on DeltaPatents Case Law blog: G 1/16 - The final word (?) about disclaimersDeltaPatentshttp://www.blogger.com/profile/07830354704918972593noreply@blogger.comBlogger7125tag:blogger.com,1999:blog-8990057754240336385.post-77940647621224706022018-02-02T00:07:34.292+01:002018-02-02T00:07:34.292+01:00To last anonymous: not necessarily. However, it is...To last anonymous: not necessarily. However, it is obviously true that the quite narrow admissibility range of said type of disclaimers may turn against the user in later opposition proceedings. Easy come, easy go...Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-55345677847069197592018-01-08T10:42:01.445+01:002018-01-08T10:42:01.445+01:00Anonymous 7 January 2018 at 18:36: yes, I think th...Anonymous 7 January 2018 at 18:36: yes, I think that needs to be the case. According to my understanding, the undisclosed disclaimer in these cases can only be a measure of last resort. In other words, when you have originally disclosed features that can restore novelty but choose to introduce an undisclosed disclaimer instead, said undisclosed disclaimer is inadmissible. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-69811147980395262062018-01-08T09:18:52.540+01:002018-01-08T09:18:52.540+01:00The problem lies in the second situation you have ...The problem lies in the second situation you have described, namely if no disclaimer will help:<br /><br />The dislaimer is present in the granted claim. This means it may not be reomoved. Introducing a feature into the granted claim which establishes novelty over the prior art document for which the disclaimer has been introduced (during the granting stage) renders the introduced disclaimer inadmissible. <br /><br />The reason is: It now removes more than necessary to establish novelty over the prior art document for which it has been introduced. According to the headnote of G1/03 and now G1/16, the disclaimer has become inadmissible ("...may not remove more than necessary to establish novelty...") and violates A. 123(2) EPC. <br /><br />As noted above, it may not removed from the claim either because it has already been introduced during the granting stage (application proceedings). Voilà the trap.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-54755104831820919052018-01-07T20:27:39.077+01:002018-01-07T20:27:39.077+01:00Let's say the original claim discloses A-B. A ...Let's say the original claim discloses A-B. A disclaimer is added in view of D1 and removes C from A-B.<br /><br />If a new novelty destroying document, E1, is introduced by the opponent, it might be prior art under Art 54(3) or under Art 54(2).<br /><br />If it is prior art under Art 54 (3)it might disclose D. Then the claim left is A-B, with a disclaimer for C and D. <br /><br />If it is a prior art under Art 54(2) it destroys the novelty of A-B and no disclaimer will help. The claim will have to be limited by other features than by disclaiming C or D.<br /> <br />Provided it abides by the conditions set in G 1/03 the introduction of such a disclaimer does not change the nature of the invention disclosed, as even the priority remains valid in spite of the disclaimer. <br /><br />To be honest, I do not see any problem, and certainly not a kind of trap. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-37452503153460214872018-01-07T18:36:58.550+01:002018-01-07T18:36:58.550+01:00This criterion seems to be a problem for the propr...This criterion seems to be a problem for the proprietor in the following situation:<br /><br />As applicant, the proprietor has introduced an undisclosed diclaimer into claim 1 to render its subject-matter novel over a prior art document under A. 54(3) EPC (in the following: D1).<br /><br />Opposition is filed and the opponent introduces a new document which destroys novelty of granted claim 1 (in the following: E1). <br /><br />In order to establish novelty (and inventive step) of the subject-matter of claim 1, the proprietor has to introduce a feature into claim 1. <br /><br />However, it seems to me that said feature must be disclosed in D1. The reason is that if said feature establishes novelty over D1 even if the undisclosed disclaimer is thought away from claim 1, the undisclosed dislaimer in amended claim 1 removes more than necessary to restore novelty of the Claims subject-matter. <br /><br />Thus, the undisclosed disclaimer has become inadmissible in amended claim 1 according to G 1/03, confirmed by G 1/16 (A. 123(2) EPC is violated). What is more, the undisclosed dislaimer may not be removed by the proprietor because claim 1 amended in this way would contravene A. 123(3) EPC.<br /><br />To put it short, the proprietor finds itself in a kind of A. 54(2) - A. 123(2) - A. 123(3) EPC trap. <br /><br />To me, this limitation of options during a potential Opposition rather speaks against incoporating an undiclosed disclaimer into a claim during application proceedings.<br /><br />What do you think?<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-61867057311226196162017-12-20T17:08:41.524+01:002017-12-20T17:08:41.524+01:00I am just a bit puzzled about one specific aspect ...I am just a bit puzzled about one specific aspect of the decision:<br /><br />Under item 36. of the reasons the EBoA stresses that "the underlying idea of A. 123(2) EPC is that an applicant or patent proprietor should not be allowed to improve his position by adding subject-matter not disclosed in the application as filed, as this would give him an unwarranted advantage." <br /><br />In line with this notion, under item 46.4 of the reasons, the EBoA states that "The question to be asked in this context is...whether...the applicant´s or patent proprietor´s position with regard to other requirements for patentability is improved."<br /><br />Essentially based on this reasoning, the EBoA concludes under item 49.1 of the reasons and the headnote that "The disclaimer may not remove more than necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons."<br /><br />In my view, this specific conclusion is not compulsory because situations are thinkable in which a more than necessary removal of subject-matter from a claim still does not provide an unwarranted advantage to the applicant/proprietor. <br /><br />Well, bad for proprietors, but good for opponents: Since the EBoA have not "softened" this criterion, it still provides a promising attack of claims reciting an undisclosed disclaimer.<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-8990057754240336385.post-25204224020127772902017-12-20T10:55:02.325+01:002017-12-20T10:55:02.325+01:00In other words, the EBA does not kill G 1/03, and ...In other words, the EBA does not kill G 1/03, and simply reiterates what has been decided in G 1/03. A combined application of G 1/03 and G 2/10 would have led to the death of G 1/03. All boards having done so, have been overly academic in their approach. <br /><br />It seems at a glance that scenario 5 (see annex to summons) has prevailed. I am curious to see the full reasoning. <br /><br />It would have been a surprise that the EBA would have thrown overboard a long standing line of case law on undisclosed disclaimers. It did not do so in G 3/14 and G 1/15. Robinnoreply@blogger.com