Again an example of the danger of introducing undisclosed disclaimers. See also T440/04 reported earlier on this Blog for another example.
This case concerns an opposition appeal against EP 0 684 304 concerning a cleaning composition.
During examination prior art under Art. 54(3) was cited against the corresponding patent application. In response the applicant introduced an undisclosed disclaimer in claim 1, disclaiming the subject matter of this 54(3) prior art. A patent was then granted.
Opposition was filed and the patent was maintained in amended form. Claim 1 as maintained differed from claim 1 as granted yet contains the undisclosed disclaimer.
In it's decision the opposition division held that altough G1/03 was not yet published at the time of introduction of the disclaimer, the principles of legitimate expectations did not prevent the application of this decision retrospectively. Further, the disclaimer was found to be drafted in accordance with the criteria of G1/03, hence the claim complied with Art. 123(2) EPC.
The opponents argued that the disclaimer removes more than necessary so that the principles of G1/03 were not met. The opposition division did not agree and found (r. 3.3):
"that Headnote II.2 of G 1/03 should be understood in the light of paragraph 3 of the Reasons for this decision. Here it is explained that the disclaimer should not remove more than necessary to restore novelty because the necessity for a disclaimer is not an opportunity for the applicant/proprietor to reshape his claims arbitrarily. On the other hand the requirements of conciseness and clarity of Article 84 also apply to claims containing disclaimers; a balance has to be struck between the interests of the applicant and of the public and this may necessitate adapting the terminology of the disclaimer in order to respect these requirements. This balance is also mentioned in the Guidelines, C-VI 5.3.11."
[..]
"the opposition division considers that the wording of the disclaimer is clear and concise and that the requirements of Article 84 are met. Moreover the disclaimer does not amount to an arbitrary reshaping of the claim as it uses precisely the wording of [..]. The opposition division therefore concludes that the balance mentioned above has been respected in the present case.
Both the proprietor and the opponents were not happy and filed an appeal.
The opponents argued that the 54(3) document that was cited during the examination proceedings was in fact not novelty destroying when the claim would have been read without the disclaimer.
The Board of Appeal then summarises the established case law, in particular G1/03 and states (r 1.1.2) :
"that the introduction of a disclaimer based on a state of the art is not allowable if said state of the art does not destroy the novelty of the claim in question (see G 1/03, point 2.6.5) [..]"
"For example, G 1/03 underlines that a disclaimer may serve exclusively the purpose for which it is intended and nothing more and that, in the case of a disclaimer concerning conflicting pplications, its purpose is to establish novelty with respect to a prior application in the sense of Article 54(3) EPC. Therefore, if a disclaimer has effects which go beyond its purpose as stated above, it is or becomes inadmissible (point 2.6.5 of the reasons)."
The Board then looks again at the 54(3) prior art and concludes that this prior art does not anticipate the subject matter of claim 1 when read without the disclaimer. Hence the disclaimer was found unallowable.
The proprietor tried to argue that the disclaimer does not have "bearing on the technical information of the application and does not contribute to the technical teaching of the claimed subject-matter; its addition to claim 1 thus cannot be considered to contravene the requirements of Article 123(2) EPC for the reasons given in G 1/93 and G 1/03 (see for example, G 1/93, headnote 2 and G 1/03, point 3 of the reasons)." (r 1.1.4)
The Board of Appeal does not agree and confirms that G1/03 specifies that a disclaimer excluding a conflicting application, only excluding subject-matter for legal reasons, is required to give effect to Article 54(3) EPC and has no bearing on the technical information in the application (points 2.1.3 and 3 of the reasons).
The disclaimer in this case does not comply with the requirements listed in G 1/03 for an allowable disclaimer since it has been drafted on the basis of a document which cannot destroy the novelty of the claimed subject-matter.
With respect to G1/93 the Board concludes that the disclaimer modifies the technical characteristics of claim 1 hence that this disclaimer constitutes an amendment that contravenes Art. 123(2) EPC. (See reason 1.1.4 for more details)
All other requests also contained the disclaimer, and as a result the patent was revoked.
I did not study the subject matter of the claims and the prior art in detail, but removal of the disclaimer was probably not an option for the proprietor in this case, because such an amendment would have contravened Art. 123(3) as extending the protection conferred. So, effectively the proprietor may have been caught in the Art. 123(3)-(2) trap.
The lesson learned from this case is (again) that one should be extremely careful when introducing undisclosed disclaimers in a patent application. In some of the recent A and B chemistry papers introduction of such disclaimers has been required (I don't know if this was the case of E/M papers). Some day the C committee will probably build a similar case in a C paper.....oops I may just have inspired them to do so.
In any case, be prepared and study G1/03 well before sitting the EQE.
Read the decision here.
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