The allowability of an undisclosed disclaimer to establish novelty over an Art.54(3) prior right was challenged in opposition. Major topics of the debate were whether the disclaimer removed more than necessary to restore novelty over the prior right and whether the disclaimer and the claim with the disclaimer were clear and concise. 'With regard to the conditions that the disclaimer meets the requirements of clarity and conciseness and does not remove more than necessary to restore novelty, both explicitly indicated in G 1/03 (see headnote, points 2.2 and 2.4), the Board concurs with the positions expressed in T 2130/11, points 2.9 and 2.10*. In particular, the difficulty for a patent proprietor in formulating an allowable disclaimer cannot justify an exception in the application of Article 84 EPC which is not foreseen in the Convention, not even with regard to the condition on the allowability of a disclaimer requiring that a "disclaimer should not remove more than is necessary to restore novelty". Rather, that condition should be applied while taking into consideration its purpose, namely that the "necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily" (G 1/03, supra, point 3 in the reasons, second paragraph, last but one sentence).' Although not the reason for selecting it for this blog, the decision also has another interesting aspect: the decision applies the partial priority decision G 1/15 in reasons 1.4.2-1.4.5.
This case refers five questions to the Enlarged Board of Appeal with respect to what is often referred to as partial priority, poisonous divisionals and poisonous priorities. This case has been discussed earlier in this blog, see our post "T 557/13 - Poisonous or nothing wrong?".
The opposition decision under appeal relates to a patent that is a divisional from D1 (which is an EP patent enjoying priority from D16). The divisional also claims priority from D16. The Opposition Division decided that claim 1 of the patent of this appeal case does not enjoy the priority from D16 and, thus, the filing date of D1 is the effective date of claim 1. It may be that the opinion of the Opposition Division is now summarized too much, but, according to the Opposition Division is D1 is an Art. 54(3) EPC document because the effective date of D1 is the priority date of D16, and D1 is published after the effective date of claim 1.
An additional complication in this case is that claim 1 of the divisional application is a so-termed "generic 'OR'-claim" (see point 8.2.2 of this decision for a definition). Subsequently one could argue that a first portion of claim 1 enjoys priority from D16 and D1 is not an Art. 54(3) EPC document for this first portion, while another second portion of claim 1 does not enjoy priority from D1 and, consequently, the novelty of this second portion must be examined over D1 as an Art. 54(3) EPC document.
Furthermore, the parties to the appeal proceedings had a diverging opinion about "Can a parent application of a divisional application be a novelty destroying Art. 54(3) EPC document?".
The Board of Appeal could not decide on these subjects because, as extensively discussed in the decision, the case law diverges in different directions. Therefore the Board formulated five questions for the Enlarged Board of Appeal.
