On August 30, 2011, the EPO Enlarged Board of Appeal (highest instance of the EPO) has issued a new decision relating to the possibility of introducing, after the filing date of a European application, a disclaimer not already contained in the original application documents. This decision relates to disclaimers added both to European applications and European patents.

It is well known that the EPO tends to apply the EPC added matter provision (art. 123(2) EPC) in a very restrictive manner, such that in certain cases the question has arisen whether the introduction of a disclaimer not already present in the original application documents could in fact represent a violation of such EPC provision.

Already in 2004 the Enlarged Board had issued a decision on this point, establishing in essence that the introduction of a disclaimer after the filing date of a European application cannot violate the EPC for the sole reason that neither the disclaimer, nor the disclaimed subject-matter, find a basis (are disclosed) in the original application documents.

The Enlarged Board has now issued a new decision (G2/10) indicating when it is possible, after the filing date of a European application, to introduce a disclaimer if the disclaimer itself was not disclosed in the original application documents but the disclaimed subject-matter was disclosed in such documents.

This new decision establishes that the introduction of a disclaimer not already disclosed in the original application documents, but which disclaims subject-matter which is itself disclosed in the original application documents, violates the EPC added matter prohibition if the subject-matter remaining in the claim after the introduction of the disclaimer is not, explicitly or implicitly, directly and unambiguously disclosed in the original application documents.

In the decision, the Enlarged Board explains that the question whether such remaining subject-matter is in fact disclosed in the original application documents must be answered from the point of view of the skilled person using common general knowledge. Furthermore, the answer to such question requires a technical, case-by-case assessment of the overall technical circumstances, also considering the nature and extent of the disclosure in the original application, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after the introduction of the disclaimer.

The test for determining the allowability of a disclaimer is therefore a question to be answered on a case-by-case basis. This leaves some room for a varying application of the principles established in the decision, and may lead to some discrepancies in the application of such principles. It will be interesting to follow how the EPO lower instances will apply this new decision.

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