The following is a guest post from the 8/12 newsletter of Dr. Stefan Danner of DHS Patentanwaltsgesellschaft mbH.
Last year, the EPO Enlarged Board of Appeal (EBA) handed down its decision in case G2/10 relating to the admissibility of disclaimers whose subject matter was disclosed as an embodiment (i.e. ‘positively disclosed’ disclaimers) in the application as originally filed.1
The EBA ruled that 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 in the application as originally filed.
Determining whether or not that is the case requires an 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, the nature and extent of the disclaimed subject matter and its relationship with the subject matter remaining in the claim after the amendment. In other words, the examination of the admissibility of a disclaimer for compliance with Article 123(2) EPC has to be made separately for the disclaimer per se and for the subject matter remaining in the claim.
The entire newsletter can be found here.