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T 1847/06: Another undisclosed disclaimer not allowed

When I was in Strassbourg earlier this year (CEIPI D course) one of the tutors warned us to stay away from undisclosed disclaimer as "it could only get you into trouble".

At that time I just took these words for granted and focussed on studying for the EQE. After the EQE I started this Blog and since then I try to pick out the interesting decisions as published regularly on the EPO website. As such, this is the 3rd time in about 3 months that a decision concerns such undisclosed disclaimers, in which indeed the proprietor of the patent got into trouble and lost a request or even his patent. See also T440/04 here and T 0107/07 here.

The present case is yet another variant of how things can go very wrong. The proprietor in appeal filed requests wherein claim 1 contains an undisclosed disclaimer, which was drafted generally as follows:

1. Use of a [..] stem cell [..] to screen [..] provided that said screening does not comprise [..]

The disclaimer was said to disclaim the subject matter of a 54(3) document.

The Board of Appeal (see Reason 13) first considers that this 54(3) document indeed anticipates the claim when read without the disclaimer. However, the Board of Appeal does not find a basis in this document for the broad "comprising" language as used by the proprietor in the disclaimer.

For this reason the Board considers that the disclaimer introduced into claim 1 extends beyond the disclosure of the 54(3) document and, therefore does not meet the requirements of G1/03. Consequently the introduced disclaimer offends against Article 123(2).

So, the lesson (I believe) to be learnt from this case is that when you have to introduce an undisclosed disclaimer, for example in the B exam, or you have to attack a claim in the C exam containing such a disclaimer, always check if the disclaimer does not extend beyond the disclosure of the document that contains the disclaimed subject matter.
If the disclaimer so extends you have probably drafted the wrong disclaimer in your B exam, or you can attack the respective claim undert Art. 123(2) in the C exam. Note that (as was the case in T440/04) if you conclude that the disclaimer does not extend beyond the contents of the "disclaimer document" this is still no guarantee that the claim (B exam) is correct or cannot be attacked (C exam). It could still be the case that the disclaimer disclaims "too little".

Have a good weekend ...

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