G 1/16 – The different Art. 123 (2) EPC test criteria for "undisclosed" (G 1/03 and G 2/03) vs. “disclosed” (G 2/10) disclaimers still apply
A claim’s subject-matter is normally defined in terms of positive features indicating that certain technical elements are present. Exceptionally, however, the subject-matter may be restricted using a so-called “disclaimer” stating that a particular feature is absent. Importantly, said disclaimer must be in line with the requirements of Art. 123(2) of the European Patent Convention (EPC) according to which the claimed subject-matter may not be amended in such a way that it extends beyond the content of the application as filed.
The case law of the European Patent Office distinguishes between "disclosed disclaimers" and "undisclosed disclaimers".
The term "undisclosed disclaimer" relates to the situation in which neither the disclaimer itself nor the subject-matter excluded by it have been disclosed in the application as filed. This is to be distinguished from the "disclosed disclaimer" in which the disclaimer itself might not have been disclosed in the application as filed, but the subject-matter excluded by it has a basis in the application as filed, e.g. in an embodiment.
Whether or not an "undisclosed disclaimer" meets the requirements of Art. 123(2) EPC has to be decided on the basis of the criteria established by the Enlarged Board in G 1/03 and G 2/03. The corresponding criteria for "disclosed disclaimers" can be found in the following decision G 2/10.
For some reason the criteria set out in G 2/10 for “disclosed disclaimers” have also been applied for “disclosed disclaimers” by some Boards of Appeal, leaving virtually no chance of an undisclosed disclaimer being allowable under the criteria of previous decisions G 1/03 and G 2/03. In other words, there was an urgent need for clarification whether disclosed and undisclosed disclaimers should be treated differently or not.
As per recent Enlarged Board of Appel decision G 1/16 it has been clarified that for "undisclosed disclaimers", solely the criteria set out in G1/02 and G2/03 continue to apply, while for "disclaimers disclosed", the criteria set out in G 2/10 are valid.