Artist Bjørn Bjørnholt

Disclaimers and intermediate generalisation

Henrik Skødt M.Sc. Ph.D. Chemistry European Patent Attorney T +34 912 979 717 E hes@pv.eu March 2012

Overview - A seemingly simple provision…

- The background of G 2/10 (G 1/93, G 1/03).

- The main result of G 2/10.

- Intermediate generalisations – T 219/09 as an example.

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Article 123(2) EPC - The European patent application or European patent may not be

amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.

- A simple provision, but what does it mean?

- G 1/93: The purpose of Article 123(2) EPC is to avoid the applicant obtaining an unwarranted advantage by means of an amendment.

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G 1/03 - Questions put to the EBA:

1. Is an amendment to a claim by the introduction of a disclaimer unallowable 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. If the answer to question 1 is no, which criteria are to be applied in order to determine whether or not a disclaimer is allowable?

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G 1/03 (continued) - Answers:

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:

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G 1/03 (continued) - 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 nontechnical reasons.

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G 2/10 - Setting things straight with respect to G 1/03.

- G 1/03 did not decide on the cases where the disclaimed subject-matter was originally disclosed as part of the invention.

- This issue therefore had to be decided independently.

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G 2/10 (continued) - Question put to the EBA:

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?

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G 2/10 (continued)

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A

B

A-B?

G 2/10 (continued) - Answer by the EBA:

la. 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. lb. 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 the amendment.

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G 2/10: - Or, briefly summarized…:

- It depends on the circumstances…

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G 2/10 (continued) - Answer Ib (graphically):

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A

B

G 2/10 (continued) - Important points from the Reasons of G 2/10:

- The ”gold standard” is ”direct and unambiguous disclosure, using common general knowledge”, also in the case of disclaiming subject-matter originally disclosed as being part of the invention.

- ”Rules of logic do not apply”, i.e. (A)-(B) ≠ (A-B) (not necessarily).

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Intermediate Generalisation - G 2/10 explicitly mentions the case law on ”intermediate

generalisation” as applicable to disclaimers.

- “Intermediate generalisation” is more appropriately referred to as “intermediate limitation” and refers to the case where only one of a collection of features from one embodiment is added to a general claim, typically a single feature from an example added to the main claim.

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Intermediate generalisation – T 219/09 - EP 1 118 363 A2 disclosed:

”a stick (1) with shock-absorber comprising: an elongated member (5), which is associated with a movable member (2) with the interposition of a shock-absorbing member (4); a means (9,12) for activating and deactivating the shock-absorbing member (4) and adapted to determine a first shock-absorbing condition and a second condition in which shock-absorbing is disabled : characterized in that the movable member (2) comprises a grip body adapted to be gripped by a user and in that the shock-absorbing member (4) and the activation and deactivation means (9,12) are arranged substantially at the grip body”

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T 219/09 - continued

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T 219/09 – cont. - Claim 1 of the main request contained the following wording:

said grip member (2; 102) is substantially prevented, and in that a cam means (15) is provided in said at least one slot (9, 10) arranged to narrow said at least one slot between said first region (14) and said second region (13), thereby preventing said pin member (12) from freely sliding from said first region (14) to said second region (13)

- Claim 1 of 1st auxiliary request replaced ”cam means” by ”cam”.

- None of the requests mentioned ”L-shaped”.

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T 219/09 – cont. - The board stated about the concept of ”intermediate generalisation”:

According to established case law it will, for example, normally not be allowable to base an amended claim on the extraction of isolated features from a set of features originally disclosed only in combination, e.g. a specific embodiment in the description, see for example decisions T 1067/97, T 714/00 or T 25/03 cited in the Case Law of the Boards of Appeal, 6th edition, 2010, III.A.2. Such an amendment results in an intermediate generalization, in that it further limits the claimed subject-matter, but is nevertheless directed at in an undisclosed combination of features broader than that of its originally disclosed context, see for example T 1408/04 and T 461/05. It is justified only in the absence of any clearly recognizable functional or structural relationship among the features of the specific combination, see T 1067/97, and if the extracted feature is thus not inextricably linked with those features, see T 714/00.

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T 219/09 – cont. - Hence, only ”in the absence of a clear relationship” between ”cam” and

”L-shaped” would the amended claims be allowable.

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T 219/09 – cont. - The board stated:

”The original disclosure thus offers the skilled person a single specific example of an activation mechanism involving cams. … Each cam (there are two) clearly forms an inseparable structural and functional part of the mechanism, in that it delimits the slot and constrains movement between the slot's different regions. Apart from describing their function within their specific context the original disclosure does not give the cams any prominence. Nor is there any intimation, or is it immediately and unequivocally clear to the skilled person for other reasons, that the other features – two slots, inverted L-shape, upper end placement between the legs of the L - might somehow be incidental to the on/off mechanism's proper functioning and could therefore be omitted or modified without consequences for the cam and its arrangement”.

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T 219/09 – cont. - Conclusion:

”There is thus nothing in the original disclosure that might have led the skilled person to consider a cam-based mechanism - say, with one slot shaped as an L the right way up, or as a T or a Z, and a single cam, or with the cam located at the lower end - other than that explicitly described.”

- The claims were therefore found to be an intermediate generalisation.

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Lessons from T 219/09 - You need to know what the invention is when you draft the application.

- And even if you don’t, you need to make ”intermediate generalisations” while drafting the application (because later it will be too late…).

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Summary - G 2/10 was preceded by the “first disclaimer decision”, G 1/03. G 1/03

did not decide on disclaiming subject-matter originally disclosed as being part of the invention.

- G 2/10: Allowability of disclaiming that type of subject-matter “depends on the circumstances”.

- Case law from “normal” cases of extension of subject-matter applies also to disclaimers, such as case law relating to “intermediate generalisation”.

- “Intermediate generalisation” is a limitation of the general disclosure, while being broader than any of the examples/narrow embodiments disclosed in the description.

- Include as many combinations (“intermediate generalisations”) as possible in the description while drafting the applicatio.

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