允許利用disclamer來克服新穎性。

EPO(G01/03)
允許利用disclamer來克服新穎性。

http://legal.european-patent-office.org/dg3/biblio/g030001ex1.htm
Headnote
1. An amendment to a claim by the introduction of a disclaimer may not be refused under Article 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed.

2. The following criteria are to be applied for assessing the allowability of a disclaimer which is not disclosed in the application as filed:

2.1 A disclaimer may be allowable in order to:

- restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC;

- restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC; an anticipation is 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.

2.2 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.

2.3 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.

2.4 A claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC.




http://ipkitten.blogspot.com/2010/07/another-referral-to-ebo-allowability-of.html

Another referral to the EBO: Allowability of disclaimers

There has been another referral to the EBO, and this one is not even on the EPO's website yet (thank you, Simon Roberts, for the pointer!). This one promises to be interesting - it concerns the much debated topic of disclaimers. In G 01/03, the EBO ruled that an amendment to a claim by the introduction of a disclaimer may not be refused under Article 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed. Undisclosed disclaimers are (at least) permissible to restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC, to restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC and to disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons.

In appeal T6810/07-3308, the TBA is now asking the Enlarged Board of Appeal:
Does a disclaimer infringe Article 123(2) EPC if its subject-matter was disclosed as an embodiment of the invention in the application as filed?
One could call this G01/03 in reverse - the allowability of disclaiming an explicitly disclosed embodiment. The referral can be found in the minutes of the oral hearing in T6810/07-3308.