Amendments introduced after the filing of a European application always raise great concerns due to the very strict EPO approach regarding amendments.

This applies to negative amendments, such as disclaimers, as well. In fact, in 2004, the EPO Enlarged Board of Appeal (EBA), i.e. the EPO highest instance, issued a decision setting out the cases where a disclaimer not already contained in the original application could in fact be included, e.g., during prosecution.

The EPO Boards of Appeal (BA) have now sent a new referral to the EBA, still on the issue of disclaimers not disclosed in the original application. The new referral dates back to June 25, 2010, and is the result of the finding, by the BA making the referral, that the EPO case law on the point is still conflicting.

In particular, the question now referred to the EBA – which does not appear to have been addressed in the EBA’s decision of 2004 – is whether a disclaimer relating to subject-matter which, as such, was positively disclosed in the original application, violates the “added matter” provision whereby a European application may not be amended so as to include subject-matter not disclosed in the original application.

In fact, two earlier BA decisions had held that a disclaimer relating to subject-matter which, as such, was positively disclosed in the original application did not represent added matter. Such disclaimer could thus be introduced into the claims even in those cases where the disclaimer itself had not been disclosed in the original application.

On the other hand, at least one earlier BA decision had held that a disclaimer relating to subject-matter which, as such, was positively disclosed in the original application had to be considered as added matter. Such disclaimer could not be introduced into the claims.

How the EBA will answer the question now before it will likely influence not only the validity of some of those already granted European patents which contain disclaimers of the type underlying the present referral, but also how a pending and future European applications will be prosecuted. In fact, it is often felt that disclaimers are helpful for excluding from a claim only what is strictly necessary, without giving up protection for the remaining subject-matter of the invention. Many patent proprietors and applicants are surely hoping that the EBA’s decision will favor the admissibility of the disclaimers addressed in the present referral.

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