G 1/03 and G 2/03

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 {{EPC Article|54|3) and (4}}, 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 {{EPC Article|54|2}}, 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):{{cite video |people=Robert Young |date=8–9 November 2012 |title=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) |url=https://e-courses.epo.org/wbts/caselaw2012/index.html |publisher=European Patent Office |location=Munich, Germany |accessdate=November 10, 2013 |minutes=2:44 to 2:55}}

• "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"; (Headnote, item II.2)
• "a disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds subject-matter contrary to {{EPC Article|123|2}}"; and (Headnote, item II.3)
• "a claim containing a disclaimer must meet the requirements of clarity and conciseness of {{EPC Article|84}}". (Headnote, item II.4)

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".[https://www.epo.org/law-practice/case-law-appeals/recent/t060154eu1.html Decision T 0154/06] of 11 January 2008, Reasons 4.{{cite video |people=Robert Young |date=8–9 November 2012 |title=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) |url=https://e-courses.epo.org/wbts/caselaw2012/index.html |publisher=European Patent Office |location=Munich, Germany |accessdate=November 10, 2013 |minutes=19:54 to 21:42 |quote=(...) 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.

• Amendments under the European Patent Convention

{{reflist}}

{{Further reading cleanup|date=October 2022}}

• {{cite video |people=Robert Young |date=8–9 November 2012 |title=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 |url=https://e-courses.epo.org/wbts/caselaw2012/index.html |publisher=European Patent Office |location=Munich, Germany |accessdate=November 10, 2013}}
• {{EPO Case law book 2022|i|a|1}}: "Patent protection for technical inventions"
• {{EPO Case law book 2022|i|b|4|4|5|b}}: "Avoiding the exclusion of methods of treatment by surgery from patent protection under {{EPC Article|53|c}} - disclaimer"
• {{EPO Case law book 2022|i|c|4|10}}: "Determining the disclosure of the relevant prior art - accidental disclosure"
• {{EPO Case law book 2022|ii|c|1}}: "Sufficiency of disclosure - introduction"
• {{EPO Case law book 2022|ii|c|3|2}}: "Parts of the application relevant for assessing sufficiency of disclosure - alleged effect not a feature of the claims"
• {{EPO Case law book 2022|ii|c|5|2}}: "Clarity and completeness of disclosure - indication of at least 'one way'"
• {{EPO Case law book 2022|ii|c|5|4}}: "Clarity and completeness of disclosure - invention to be performed over whole range claimed"
• {{EPO Case law book 2022|ii|c|5|5|1|a}}: "Ambiguous parameters - essential parameters"
• {{EPO Case law book 2022|ii|c|6|1}}: "Reproducibility - repeatability"
• {{EPO Case law book 2022|ii|c|6|8}}: "Reproducibility - post-published documents"
• {{EPO Case law book 2022|ii|c|7|2|1}}: "Level of disclosure required for medical use – plausibility - principles established by the case law"
• {{EPO Case law book 2022|ii|c|7|3}}: "Level of disclosure required for antibodies"
• {{EPO Case law book 2022|ii|d|3|1|2}}: "G 2/98 and the concept of disclosure – interpretation in the same way as for {{EPC Article|123|2}}"
• {{EPO Case law book 2022|ii|d|3|1|6}}: "Enabling disclosure in the priority document"
• {{EPO Case law book 2022|ii|d|4|1}}: "First application in respect of the invention - identity of invention"
• {{EPO Case law book 2022|ii|d|5|3|3}}: "Multiple priorities or partial priority for one claim - application of G 1/15 in the jurisprudence of the boards"
• {{EPO Case law book 2022|ii|e|1|1}}: "{{EPC Article|123|2}} – added subject-matter - general principles"
• {{EPO Case law book 2022|ii|e|1|6|2|a}}: "Selections from two lists – singling out a combination of features - principles"
• {{EPO Case law book 2022|ii|e|1|7|1}}: "Disclaimers - definition"
• {{EPO Case law book 2022|ii|e|1|7|2}}: "Disclaimers - standards for examining disclosed and undisclosed disclaimers"
• {{EPO Case law book 2022|ii|e|1|7|2|a}}: "Disclaimers - standards for examining disclosed and undisclosed disclaimers - principles established in G 1/03 and G 2/03 for undisclosed disclaimers"
• {{EPO Case law book 2022|ii|e|1|7|2|b}}: "Disclaimers - standards for examining disclosed and undisclosed disclaimers - principles established in G 2/10 for disclosed disclaimers"
• {{EPO Case law book 2022|ii|e|1|7|2|c}}: "Disclaimers - standards for examining disclosed and undisclosed disclaimers - explanations in G 1/16"
• {{EPO Case law book 2022|ii|e|1|7|3|a}}: "Disclaimers - decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16 - accidental anticipation"
• {{EPO Case law book 2022|ii|e|1|7|3|b|i}}: "Disclaimers - decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16 - accidental anticipation - disclosure of the interfering document not novelty destroying"
• {{EPO Case law book 2022|ii|e|1|7|3|b|iii}}: "Disclaimers - decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16 - accidental anticipation - disclaimer covered more than what was disclosed in the prior art"
• {{EPO Case law book 2022|ii|e|1|7|3|d}}: "Disclaimers - decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16 - drafting of disclaimers – delimitation against any potential prior art"
• {{EPO Case law book 2022|ii|e|1|7|3|e}}: "Disclaimers - decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16 - drafting of disclaimers – clarity"
• {{EPO Case law book 2022|ii|e|1|7|3|f}}: "Disclaimers - decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16 - drafting of disclaimers – undisclosed disclaimer must not relate to the teaching of the invention"
• {{EPO Case law book 2022|ii|e|1|7|3|g}}: "Disclaimers - decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16 - drafting of disclaimers – positive features – G 1/03 not applicable"
• {{EPO Case law book 2022|ii|e|1|7|3|h}}: "Disclaimers - decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16 - drafting of disclaimers – negative feature implicitly disclosed in original application – G 1/03 not applicable"
• {{EPO Case law book 2022|ii|e|1|7|5}}: "Disclaimers - applicability of the decisions of the enlarged board to cases already pending"
• {{EPO Case law book 2022|ii|e|1|7|6}}: "Disclaimers - no analogy with G 1/03 where a disclaimer already in the application as filed is deleted"
• {{EPO Case law book 2022|ii|e|1|15}}: "{{EPC Article|123|2}} – added subject-matter - "comprises", "consists of", "consists essentially of", "contains""
• {{EPO Case law book 2022|ii|e|3|2|1}}: "Relationship between {{EPC Article|123|2}} and {{EPC Article|123|3}} - attempts to resolve the conflict - general"
• {{EPO Case law book 2022|iii|a|6|1}}: "Legitimate expectation and case law - case law deviating from or overruling the practice"
• {{EPO Case law book 2022|iii|h|1|2|3}}: "Application of the rules of interpretation - teleological interpretation"
• {{EPO Case law book 2022|iii|n|2|4}}: "Formal requirements - anonymously filed observations"
• {{EPO Case law book 2022|v|a|3|1|7|f}}: "Exceptions to the prohibition of reformatio in peius - undisclosed disclaimer"

• Decisions on the "EPO boards of appeal decisions" section of the EPO web site:
• [https://www.epo.org/law-practice/case-law-appeals/recent/g030001ep1.html G 1/03], {{ECLI|ECLI:EP:BA:2004:G000103.20040408}}
• [https://www.epo.org/law-practice/case-law-appeals/recent/g030002ep1.html G 2/03], {{ECLI|ECLI:EP:BA:2004:G000203.20040408}}
• {{EPC Article|123|2}}

{{Decisions and opinions of the Enlarged Board of Appeal of the European Patent Office}}

{{DEFAULTSORT:G 1 03 and G 2 03}}

G 2003 1 and G 2003 1

Category:2004 in case law

Category:2004 in Europe