G 1/03 and G 2/03
# G 1/03 and G 2/03

G 1/03 and G 2/03 :

Enlarged Board of Appeal of the European Patent Office :

Issued April 8, 2004 :

Board composition :

* Chairman: Peter Messerli
* Members: R. Teschemacher, C. Andries, G. Davies, B. Jestaedt, A. Nuss, J.-C. Saisset

Headwords :

* Disclaimer/PPG (G 1/03), Disclaimer/GENETIC SYSTEMS (G2/03)

G 1/03 and G 2/03 are two decisions of the Enlarged Board of Appeal of the European Patent Office (EPO), which were both issued on April 8, 2004.

The decisions, which are identical, relate to the allowability of introducing disclaimers during the prosecution of a European patent application or during opposition proceedings relating to a granted European patent. More precisely, they relate to whether and under which circumstances an amendment introducing a negative limitation to a claim is allowable, when neither the negative limitation nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed (Article 123(2) EPC).

## Decision

The Board ruled that introducing a disclaimer which has no basis in the application as filed may be allowable in order to:

* restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC, i.e. against a novelty-destroying conflicting application (a first European patent application is said to be a "conflicting application" when it was filed before the effective date of filing of a second European patent application, but when this first application was published only after the effective date of filing of the second application);
* restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC, where an anticipation is said to be accidental if it is so unrelated to and remote from the claimed invention 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. (Headnote of the decision, item II.1)

The Board however set out stringent criteria for their application (which have later led to many disclaimers being found inadmissible):

* "a disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons"; (Headnote, item II.2)
* "a disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to Article 123(2) EPC"; and (Headnote, item II.3)
* "a claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC". (Headnote, item II.4)

Decisions G 1/03 and G 2/03 only apply to "undisclosed disclaimers", i.e. disclaimers which are not disclosed in the application as filed. The framework of these decisions is limited to "(originally) undisclosed disclaimers".

