Disclosed, disclaimed, disgruntled

Andy Cloughley (Miller Sturt Kenyon, London) suspected that he might not the first to point this Kat to the latest (and keenly awaited) decision from the European Patent Office's Enlarged Board of Appeal -- but he was wrong.  Most of the Kat's patent-oriented readers were (i) on holiday, or (ii) playing catch-up with the piles of work awaiting them on their return from holiday or (iii) stunned by the folly of the England football taking the trouble to beat Bulgaria having first issued their excuses as to why they might be expected to lose (pebbles on the football field, wrong length of grass, no decent players, wind blowing in the wrong direction etc).  Anyway, this fascinating decision, which you can read in all its glorious fullness here, is G 2/10 and it is a 49-page answer to the question:
"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?"
At this point the Kat suspects that some of his non-patent readers might just be glazing over, but don't despair -- Andy has provided a short, succinct note which explains everything even if, as he says [by way of a disclaimer, notes Merpel ...], he has only just seen it himself so hasn't had a chance to study it, so the following comments are "very brief and should not to be taken as gospel". As Andy explains:
"The decision relates to disclaimers – negative technical features, typically excluding from a general feature specific embodiments or areas – and in particular disclaimers of subject matter that was disclosed in the application as filed.

The Enlarged Board states that, where a claim is amended by including a disclaimer of subject matter that has been disclosed in the application, the claim nevertheless infringes Article 123(2) EPC (that is, includes added subject matter) if the subject matter remaining in the amended claim is not explicitly or implicitly disclosed in the application as filed.

The way in which you work out whether something is disclosed is to use the usual added subject matter test under Article 123(2) EPC. This is the time-honoured "what would a skilled person derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application as filed" following from the Board's earlier decisions in G 3/89 and G 11/91. After the amendment, the skilled person may not be presented with new technical information. 
Point 4.5.5 of the decision is interesting in that it indicates that to avoid an amended claim including a disclaimer of disclosed subject matter from infringing Article 123(2) EPC, it is not necessary to explicitly state in the application as filed that the subject matter being disclaimed is excluded from protection. 
G 1/03 (which relates to disclaimers of undisclosed subject matter and sets strict rules for their use) is said not to be much help to the question of disclaimers relating to disclosed subject matter (point 3.9 of G 2/10)
In short, even if the subject matter of disclaimer in an amended claim is disclosed in the application as filed, the claim can still comprise added matter. This may come as a disappointment to some practitioners. Conversely, it does not necessarily follow that the claim does comprise added matter – it is necessary to review the application as filed using the usual tests to see whether it does".
The IPKat thanks Andy for taking the trouble to set this decision out far more neatly than he could.  Merpel's still not happy, though: she still feels that it's illogical to maintain that something which has been disclosed in the application as filed can ever be regarded as added matter.  She also wonders whether this degree of complexity in the application and interpretation of the EPO's rules serves any valuable purpose, in the great scheme of things, other than making the patent system more baffling and user-unfriendly than it already is.  Whose interests are protected by decisions such as these? What impact do they have in the marketplace in which patents confer monopolies and encourage or protect investment?

Enlarged Board here
Enlarged Blind Spot here
Enlarged Bowel here

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