The inclusion of a disclaimer, where subject matter is carved out from the scope of a patent claim by means of a negative feature is not explicitly allowed for in the European Patent Convention (EPC). In most circumstances, the subject matter of amendments to European patent applications must be derivable from the application as filed. However, Enlarged Board decision G1/03 and G2/10 allowed disclaimers in some circumstances. G1/16 confirms that the criteria for the allowability of an undisclosed disclaimer set out in G1/03 remain applicable and it is not also necessary for the subject matter of the disclaimer to be derivable from the application as filed.

"Undisclosed Disclaimers" and the G1/03 Criteria

In 2004, Enlarged Board referral G1/03 dealt with the situation of "undisclosed disclaimers", those which seek to carve out from the scope of a claim subject matter of an earlier disclosure which the applicant could not have been aware of at the time of filing or subject matter that could not be covered for non-technical reasons, e.g. because it relates to unpatentable subject matter.

G1/03 set out strict criteria when such "undisclosed disclaimers" were permissible. That decision has been interpreted as exempting disclaimers that meet the criteria from the need to be derived from the application as filed. To illustrate, if the application as filed claims "fruit" as a genus, and an earlier novelty-only citation disclosed "apple", G1/03 may allow a disclaimer to "apple" to be inserted even though "fruit other than apple" was not disclosed in the application as filed.

G2/10: "Disclosed Disclaimers" derivable from the application

In 2011, G2/10 dealt with the situation where subject matter disclosed in an application, e.g. as a possible embodiment, is removed from the scope of the claim. In order to comply with the requirements of Article 123(2) EPC it was held that such disclaimers must meet the "gold standard" of resulting in a claim, the subject matter of which is derivable from the application as filed, e.g. because the skilled person would have understood that the subject matter lacking the embodiment disclaimed is a possible alternative.

Continuing with the illustration, if the application disclosed the genus "fruit" with "orange" as an example, there may be an implicit disclosure of "fruit other than orange" enabling the addition of a disclaimer.

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