The case was decided on August 30, 2011 (The Scripps Research Institute) by the Enlarged Board of Appeal of the European Patent Office. The invention underlying the referring decision T 1068/07 (OJ EPO 2011, 256) concerns certain DNA molecules. Each of the claims at issue contains a disclaimer excluding molecules by a functional feature defining a property of the molecules. According to the referring Board, the claims with the disclaimer are directed to embodiments the subject-matter of which was disclosed in the original application.
In the case law of the Boards of Appeal, an amendment disclaiming originally disclosed subject-matter in a claim drafted in more general terms was considered allowable in one of the earliest decisions (T 4/80, OJ EPO 1982, 149). This remained uncontested until decision 1102/00 of June 1, 2004 and several further decisions concluded from the decisions of the Enlarged Board of Appeal (EBA) in cases G1/03 and G 2/03 that a disclaimer is only allowable if it could be inferred from the disclosure of the application as filed that the applicant intended to exclude such subject-matter from the scope of protection it was seeking. However, some years later different conclusions were reached in decisions T 1139/00 of February 2, 2005 and in particular in T 1107/06 of December 2, 2008, expressly disagreeing with the reasoning of T 1102/00. This divergence in case law prompted Technical Board of Appeal 3.3.04 to refer the point of law to the EBA in decision T 1068/07. The question was answered as follows:
1a. An amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed infringes Article 123 (2) EPC if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.
1b. Determining whether or not that is the case requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after amendment.
At the outset, the EBA dismisses the approach taken in the case law following T 1102/00, assuming that the question has been dealt with in G 1/03 and that this decision contains the criteria applicable to assessing the allowability of disclaimers for undisclosed as well as for disclosed subject-matter. The EBA concludes that G 1/03 only deals with the admissibility of disclaimers for undisclosed subject-matter and does not give an exhaustive definition of the situations in which a disclaimer is admissible. Decisions of courts in England and the Netherlands are cited which have taken the same stance. On the other hand, the EBA does not agree with the approach that the allowability of an amendment disclaiming a more specific embodiment from a general teaching can be decided following rules of logic in the sense that the disclosure of the general teaching and the disclosure of the specific embodiment would, by implication, inevitably also disclose all embodiments within the ambit of the general teaching which are not disclaimed.
The EBA notes that, even if it may be said that there is not normally a problem with the original disclosure for the remaining subject-matter when originally disclosed specific embodiments, groups thereof or areas are disclaimed from the scope of a more general claim reflecting a more general teaching which has equally been disclosed, the question can nevertheless not be decided schematically. Instead, an assessment of the overall technical circumstances of the individual case under consideration is required and the test to be applied is whether the skilled person, using common general knowledge, would regard the remaining claimed subject-matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed.
Whereas it may not be surprising that the test for assessing the question of added subject matter in case of the introduction of a disclaimer for a disclosed embodiment is not different from the usual disclosure test under Article 123 (2) EPC, it may be not easy to derive at first glance from these general considerations the situations in which problems may arise. The EBA, stating that the general criteria applicable to the introduction of a limitation defined in positive terms also apply to the introduction of a disclaimer, mentions the case law regarding intermediate generalisations and singling out. However, this case law is concerned with the situation that a feature disclosed in connection with a specific embodiment is used for defining the invention in broader terms. In contrast, a disclaimer excludes a specific embodiment as a whole, typically not modifying the disclosure for the broader technical teaching.
Nevertheless, the EBA mentions the possibility that the insertion of a disclaimer into a claim may result in singling out a hitherto not mentioned or at least not specifically disclosed individual compound or group of compounds, or would lead to a particular meaning of the remaining claimed subject-matter which was not originally disclosed. This may be seen in connection with the EBA’s definition of a disclaimer which may not only exclude specific embodiments but also groups of embodiments defined in generic terms, and indeed the EBA emphasizes that the main problem of the compatibility of disclosed disclaimers with Article 123 (2) EPC arises in those cases in which a whole area or subclass is disclaimed. This may lead to situations in which the excluded subgroup is larger than the remaining group and the remaining subject-matter may even be a single embodiment. Thus, an assessment of the overall technical circumstances of the individual case is required, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after the amendment.
In any case, the EBA’s statement, referring to G 1/03, that the exclusion of one of several disclosed specific embodiments from an invention disclosed in general terms will normally not modify the remaining general teaching, will be helpful for the applicant or patentee trying to introduce a disclaimer for a disclosed embodiment. The EBA expressly acknowledges certain situations in which a disclaimer may be legitimate, stating that the applicant may be interested in obtaining a first quicker protection for a preferred embodiment and pursue the general teaching in a divisional application. The EBA also addresses the question whether or not and, if so, under what circumstances, in such a case a disclaimer would be necessary in order to avoid the so-called prohibition on double protection, but does not go into any further details in this respect. These remarks offer a solution to the problem of double patenting which was seen in decision T 307/03 (OJ 2009, 422), diverging from consistent EPO practice and so far not followed by other Boards of Appeal, disagreed in T 1423/07 of April 19, 2010, if it should turn out that there is such a problem.