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:

  1. 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);
  2. 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
  3. 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):[1]

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".[2][3]

See also

References

  1. ↑ Robert Young (8–9 November 2012). EPO boards of appeal and key decisions: Disclaimers and their legal basis, especially in the light of decisions G 1/03, 2/03 and G 2/10 – possible consequences for their use as an instrument of patent prosecution (Part 3 of 3). Munich, Germany: European Patent Office. 2:44 to 2:55 minutes in. Retrieved November 10, 2013.
  2. ↑ Decision T 0154/06 of 11 January 2008, Reasons 4.
  3. ↑ Robert Young (8–9 November 2012). EPO boards of appeal and key decisions: Disclaimers and their legal basis, especially in the light of decisions G 1/03, 2/03 and G 2/10 – possible consequences for their use as an instrument of patent prosecution (Part 1 of 3). Munich, Germany: European Patent Office. 19:54 to 21:42 minutes in. Retrieved November 10, 2013. (...) the restricted framework of the decisions. They were talking about undisclosed disclaimers. See also "Part 3 of 3" 2:15 to 2:33 minutes in.

Further resources

External links

This article is issued from Wikipedia - version of the Thursday, May 05, 2016. The text is available under the Creative Commons Attribution/Share Alike but additional terms may apply for the media files.