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T0998/06: Undisclosed disclaimers and clarity

The patentee in opposition proceedings introduced an undisclosed disclaimer in view of prior art under Art 54(3) which as you all know (!?) is allowed in view of G1/03. The patent was maintained in amended form by the opposition division and the patentee filed appeal against the decision.

In view of the Board the disclaimer contains several features that give rise to clarity objections:

First of all the disclaimer contains "product-by-process" type features. The question arises whether the process features result in a product that differs from a product having the same composition (in this case a polymer product) yet being made with a different proces. The Board concludes that neither the patent nor the prior art gives any relevant information in that respect. Thus, in view of the Board it is unclear for the public whether the process steps for making the product are essential (notwendig) or not. Thus, it is unclear what part of the scope of the claim is actually disclaimed.

Secondly the disclaimer lacks clarity in that the method for measuring a certain parameter is not incoirporated in the disclaimer. (Although apparently there was basis in the prior art for the introduction thereof...).

Thirdly the disclaimer refers to components being present in certain "parts" (Teile) without defining whether it concerns volume, weight or any other type of "parts".

The above clarity issues are not really specific to disclaimers. That said, when introducing undisclosed disclaimers a patentee (or applicant), in view of the other requirements of G1/03, is likely to keep the claim language as close as possible to the actual disclosure of the 54(3) prior art. For example, it would be interesting to know what would have happened if the patentee would have introduced the prior art compositions without the process steps. My guess is that such a claim would be objected to as excluding more than necessary. Here again the patentee cannot rely on the prior art nor on its own disclosure for arguing this is not the case....

In G1/03, reason 3, the Enlarged Board noted that the requirements of consiseness and clarity of Art. 84 are also applicable to claims containing disclaimers.
Hence, the appeal was dismissed.

Read more on undisclosed disclaimers here, here and here.

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