Disclaimer (patent)
Encyclopedia
In patent law
, a disclaimer are words identifying, in a claim
, subject-matter that is not claimed. By extension, a disclaimer may also mean the action of introduction a negative limitation in a claim, i.e. "an amendment to a claim resulting in the incorporation therein of a "negative" technical feature, typically excluding from a general feature specific embodiments or areas". The allowability of disclaimers is subject to particular conditions, which may vary widely from one jurisdiction to another.
of the Boards of Appeal of the EPO
, disclaimers are allowed only in certain circumstances, as confirmed in G 1/03 and G 2/03
decisions.
The reasoning of G 1/03 and G 2/03 applies to disclaimers which are not disclosed in the application as filed. In other words, these decisions relate to "(originally) undisclosed disclaimers".
According to decisions T 1050/99 of 25 January 2005, even if there is a disclosure of the subject-matter being disclaimed, the disclaimer may still qualify as an "undisclosed disclaimer":
Likewise, according to T 1559/05 of 15 November 2007, for a disclaimer to qualify as a "disclosed disclaimer" thus allowable under , it is not sufficient that the feature which is the subject of the disclaimer be disclosed in the application as filed. The negative limitation introduced into the claims, which could be for instance "... with the proviso that said plastic material is not TPX 4-methylpentene-1 polymer from Mitsui Petrochemical Industries, Japan", must be disclosed in the application as filed as a disclaimer.
In contrast, in decision T 1139/00 of 10 February 2005 (in line with the European qualifying examination (EQE) ExaminersÂ’ Report for paper B 2005, Chemistry part ), the Board held that it was sufficient that the subject-matter excluded by the disclaimer be supported by the application as filed for it to be allowable under Art. 123(2) EPC. In other words, the Board held that decisions G1/03 and G2/03 were not relevant when the subject of the disclaimer is disclosed in the application as filed, even if not disclosed as a disclaimer.
In view of the divergent decisions (on the one hand, e.g. T 1050/99 and T 795/05, and, on the other hand, e.g. T 1107/06 and T 1139/00), the following question has been referred by Board of Appeal 3.3.08 to the Enlarged Board of Appeal (under ): "Does a disclaimer infringe Article 123(2) EPC if its subject-matter was disclosed as an embodiment of the invention in the application as filed?". The case has received the number G 2/10.
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
, a disclaimer are words identifying, in a claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
, subject-matter that is not claimed. By extension, a disclaimer may also mean the action of introduction a negative limitation in a claim, i.e. "an amendment to a claim resulting in the incorporation therein of a "negative" technical feature, typically excluding from a general feature specific embodiments or areas". The allowability of disclaimers is subject to particular conditions, which may vary widely from one jurisdiction to another.
European Patent Office (EPO)
Under the case lawCase law
In law, case law is the set of reported judicial decisions of selected appellate courts and other courts of first instance which make new interpretations of the law and, therefore, can be cited as precedents in a process known as stare decisis...
of the Boards of Appeal of the EPO
Appeal procedure before the European Patent Office
Decisions of the first instances of the European Patent Office can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure , as opposed to an administrative procedure. These boards act as the final instances in the granting and opposition procedures before the...
, disclaimers are allowed only in certain circumstances, as confirmed in G 1/03 and G 2/03
G 1/03 and G 2/03
G 1/03 and G 2/03 are two decisions of the Enlarged Board of Appeal of the European Patent Office , which were both issued on April 8, 2004....
decisions.
- "A disclaimer [which is not disclosed in the application as filed] may be allowable in order to:
- restore novelty by delimiting a claim against state of the artState of the artThe state of the art is the highest level of development, as of a device, technique, or scientific field, achieved at a particular time. It also refers to the level of development reached at any particular time as a result of the latest methodologies employed.- Origin :The earliest use of the term...
under ; - restore novelty by delimiting a claim against an accidental anticipation under ; an anticipation is accidental if it is so unrelated to and remote from the claimed inventionInventionAn invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
that the person skilled in the art would never have taken it into consideration when making the invention; and - disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons."
- restore novelty by delimiting a claim against state of the art
The reasoning of G 1/03 and G 2/03 applies to disclaimers which are not disclosed in the application as filed. In other words, these decisions relate to "(originally) undisclosed disclaimers".
According to decisions T 1050/99 of 25 January 2005, even if there is a disclosure of the subject-matter being disclaimed, the disclaimer may still qualify as an "undisclosed disclaimer":
- "Thus, there is a basis in the application for the subject-matter which is excluded in the claim. However, that subject-matter is presented as a part of the invention, not as an area which should be excluded or avoided. In this sense, the disclaimer is in fact an "undisclosed" disclaimer because there is no disclosure in the application as filed of the disclaimer per se."
Likewise, according to T 1559/05 of 15 November 2007, for a disclaimer to qualify as a "disclosed disclaimer" thus allowable under , it is not sufficient that the feature which is the subject of the disclaimer be disclosed in the application as filed. The negative limitation introduced into the claims, which could be for instance "... with the proviso that said plastic material is not TPX 4-methylpentene-1 polymer from Mitsui Petrochemical Industries, Japan", must be disclosed in the application as filed as a disclaimer.
In contrast, in decision T 1139/00 of 10 February 2005 (in line with the European qualifying examination (EQE) ExaminersÂ’ Report for paper B 2005, Chemistry part ), the Board held that it was sufficient that the subject-matter excluded by the disclaimer be supported by the application as filed for it to be allowable under Art. 123(2) EPC. In other words, the Board held that decisions G1/03 and G2/03 were not relevant when the subject of the disclaimer is disclosed in the application as filed, even if not disclosed as a disclaimer.
In view of the divergent decisions (on the one hand, e.g. T 1050/99 and T 795/05, and, on the other hand, e.g. T 1107/06 and T 1139/00), the following question has been referred by Board of Appeal 3.3.08 to the Enlarged Board of Appeal (under ): "Does a disclaimer infringe Article 123(2) EPC if its subject-matter was disclosed as an embodiment of the invention in the application as filed?". The case has received the number G 2/10.
See also
- Amendments under the European Patent ConventionAmendments under the European Patent ConventionArticle 123 of the European Patent Convention relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable...
- Prosecution disclaimerProsecution disclaimerUnder United States patent law a prosecution disclaimer is a statement made by a patent applicant during examination of a patent application which can limit the scope of protection provided by the resulting patent...