SONN Patentanwälte – IP Attorneys

EPO case law : Allowability of non-disclosed disclaimers

In order to assess whether a claim amended by the introduction of an undisclosed disclaimer is allowable under Art 123(2) EPC, the disclaimer must meet one of the criteria set out in point 2.1 of decision G 1/03. The introduction of such a disclaimer may not make a technical contribution to the subject-matter disclosed in the application as filed. In particular, it may not be or become relevant to the assessment of the inventive step or to the question of sufficiency of disclosure. The disclaimer may not remove more than necessary either to restore the novelty or to disclaim subject-matter excluded from patentability for non-technical reasons. The assessment of the allowability of an amendment of a claim by an undisclosed disclaimer is therefore based exclusively on the criteria defined in G 1/03. In other words, once an amendment by an undisclosed disclaimer has met the requirements of G 1/03, the introduction of such an undisclosed disclaimer must be considered allowable under Art 123(2) EPC for legal reasons, without prejudice to the other requirements of the EPC. No modifications are to be made to, nor any conditions added which go beyond the criteria of G 1/03 (EPA EBoA 18 December 2017, G 1/16, Disclaimer III).