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T440/04: The danger of undisclosed disclaimers

In G1/03 the Enlarged Board of Appeal set out the conditions under which it was allowable to introduce a so-called undisclosed disclaimer. For those of you who can't remember :

An amendment to a claim by the introduction of a disclaimer may not be refused under Art. 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.

The following criteria are to be applied for assessing the allowability of a disclaimer which is not disclosed in the application as filed:

1.A disclaimer may be allowable in order to:

- restore novelty by delimiting a claim against state of the art under Art. 54(3) and (4) EPC;

- restore novelty by delimiting a claim against an accidental anticipation under Art. 54(2) EPC;

- disclaim subject-matter which, under Art.s 52 to 57 EPC, is excluded from        patentability for non-technical reasons.

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.

In T440/04, a patent was maintained in amended form by the Opposition Division. Due to loss of priority, a patent application in the name of the proprietor of the patent in suit became prior art under Art. 54(3) against the latter.

The patent related to man-made vitreous fibres of a certain composition comprised of a number of components each having a certain range in concentration. These fibres  have certain properties such as sintering temperature and dissolution rate.

One example in the 54(3) document, referred to as C63, disclosed a fibre having a composition falling within the claimed range. The proprietor therefore introduced a disclaimer in claim 1 which would restore novelty over C63 hence be allowable in view of G1/03. C63 did not disclose the specific property of sintering temperature, yet since the fibre composition was within the claimed range the sintering temperature was disclosed implicitly (proprietor confirmed this, see 4.2.2 of the decision).

The Board of Appeal analysed the allowability of the disclaimer and came to the conclusion that C63 did not only disclose the specific example, but also further embodiments with a composition close to the one as claimed in the several requests.

4.3.1 : ... it is immediately apparent from C63 that example 1 is not an isolated example but serves to illustrate one preferred alternative wherein the fibres [..] have a composition within the preferred ranges [..]. In view of the said generic indications [..] the board considers that the teaching of this document having regard to the production of high alumina fibres falling within the ambit of the present claims 1 according to all requests is not strictly limited to what is described in example 1.

4.3.2: More particularly, considering that an example given in a patent application usually represents a useful and preferred embodiment of the broader teaching disclosed therein, the board takes the view that in the absence of indications to the contrary the skilled person would seriously contemplate (in the sense of e.g. decisions T 0666/89 and T 0245/91) applying the teaching [..] of C63 to the production of fibres having compositions within the preferred ranges taught for the high-alumina alternative, according to the method disclosed in C63 in connection with the example [..]. More particularly, the skilled person would contemplate applying the said teaching of C63 to the production of fibres with compositions
substantially equal or close to the composition of example 1 of C63, i.e. compositions belonging to a subregion of the overlap between said preferred ranges and the ranges of the present claims, which sub-region encloses example 1.

The Board further says in R 4.4 :

Whereas on the one hand a disclaimer should not remove more than is necessary to restore novelty, it cannot, on the other hand, be considered to serve its intended purpose when it excises less than what is necessary to
restore novelty.

The Board concluded that the introduced disclaimer thus contravened Art. 123(2) and the patent was revoked.

Just an (for the proprietor unfortunate) example of the danger of introducing undisclosed disclaimers....

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