CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 88/21 – Disclaimer and priorities

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The application relates to a strengthened glass article.

Brief outline of the case

The application was refused due to the insertion of an undisclosed disclaimer in the claims of the (then and current) MR did not fulfil the requirements of Art 123(2).

The application was filed on 22.07.2016.

The application claims inter alia the priority of D0=US 62/194,984 filed on 21.07.2015.

The following documents also play a role in the present case:

D1=EP 3 204 338 published on 14.04.2016 as WO 2016/057787 pursuant to Art 153(3)

D1a=US 62/117,585, a priority document of D1 with a filing date of 18.02.2015

The board confirmed the refusal as the disclaimer indeed infringed Art 123(2).

The applicant further requested a referral of questions to the EBA. This request was refused.

The applicant’s position

Compared with the current application as originally filed, claim 1 of the MR contains an undisclosed disclaimer based on Examples 4A-D and 5A of D1.

The addition of the undisclosed disclaimer fulfilled the criteria of G 1/03, and priority from D0 was validly claimed.

When assessing the validity of the priority of the claimed subject-matter and the allowability of the undisclosed disclaimer, the claims currently on file had to be considered; not the notional claims before addition of the disclaimer. This was in line with G 2/98, G 1/03 and G 1/16.

For the applicant T 1872/14 and T 1843/09 supported these conclusions.

A different approach had been taken in decision T 1222/11 but was rejected in T 1872/14. This different approach should not be followed.

Since there was contradicting case law, a referral to the Enlarged Board of Appeal should be made.

The applicant argued further that:

(ä) None of the subject-matter remaining in current claim 1 was disclosed in D1/D1a.

(b) Therefore, D0 was the first application within the meaning of Art 87(1) for the remaining subject-matter.

(c) Consequently, the priority of the MR based on D0 was valid.

(d) D1 was hence prior art under Art 54(3), not under Art 54(2).

(e) Since the disclaimer restored novelty over D1 as an Art 54(3) document, the insertion of the disclaimer was allowable under the criteria set out in G 1/03 and G 1/16. The requirements of Art 123(2) were hence fulfilled.

First line of defence – T 1872/14.

In T 1872/14, an undisclosed disclaimer based on an example with a compound disclosed in D1 was added to the claim to restore novelty over that document. D1 was from the same applicant and validly claimed priority from a US application which had an earlier filing date than D1.

In T 1872/14, the priority for the remaining subject-matter was valid since the identity of the invention had not been changed by the disclaimer (Reasons 5.3.3)

D1 was thus prior art pursuant to Art 54(3), and the inclusion of the disclaimer met the criteria of G 1/03 (Reasons 5.4).

Second line of defence – T 1843/09.

In T 1843/09 an undisclosed disclaimer based on an example in an earlier application had been allowed (Reasons 3.1).

The applicant agreed with the partial priorities concept of G 1/15 but alleged that this decision had no bearing on the current case.

Third line of defence – Avoiding “self-collision”

The applicant finally argued that the line taken here, in particular following T 1222/11, would amount to an unfair disadvantage for applicants because of “self-collision”; as under the same circumstances a third party would be allowed to insert a disclaimer.

The board’s position

Priority not valid

The subject-matter of claim 1 of the current application before the addition of the disclaimer was anticipated by Examples 4A-D and 5A of D1, as acknowledged by the applicant.

The effective date of these examples in D1 is the filing date of D1a, i.e. 18 February 2015. This is before the filing date of D0 on 21 July 2015.

As far as the subject-matter of Examples 4A-D and 5A of D1/D1a is concerned, D1a – and not D0 – is hence the first application within the meaning of Art 87(1 +4).

Therefore, the current application cannot validly claim the priority of D0 for the subject-matter of these examples, and the effective date in this regard is the filing date of the current application, i.e. 22.07.2016.

Since D1 was published on 14.06.2016 prior to the filing date of 20.07.2016, D1 is prior art under Art 54(2) for this subject-matter.

T 1222/11-  Key decision for the board

The board noted that in T 1222/11 (Reasons 5, 6, 7, 9.2 and 12), a case similar to the one at hand, the inclusion of several undisclosed disclaimers on the basis of exemplified compositions in an earlier application by the same applicant (comparable to D1 in the current case) was held not allowable under Art 123(2). The board considered that the earlier application was the first application within the meaning of Art 87(1) for these compositions and that the priority as claimed by the application was in so far not valid.

With the claim without the disclaimer being the relevant yardstick, these compositions in the earlier application were prior art under Art 54(2) and not Art 54(3). The addition of the disclaimers thus did not fulfil the criteria of G 1/03.

Disagreement with T 1872/14

The present board did not agree with the conclusion in T 1872/14 (Reasons 5.3.3 with reference to G 1/03 Reasons 2.1.3) that the disclaimer does not change the technical information (the identity of the invention within the meaning of Art 87(1) in such general terms.

In line with G 2/98, OJ 2001, 413, G 1/16 (Reasons 46.2) explicitly states that the language in the cited passages in G 1/03 bore the potential of being understood too broadly and thus misleading because inserting any disclaimer into a claim necessarily changes the technical information in quantitative terms.

The question, see G 1/16, Reasons 46.4, is if the technical teaching of the claims after the inclusion of the disclaimer changes also in qualitative terms and can thus no longer be considered to belong to the invention as presented in the application as originally filed, thus infringing Art 123(2).

Disagreement with T 1843/09

For the board, T 1843/09 did not support the applicant’s view as it does not address the situation in the case at hand and is thus not comparable. The question of the first application was not posed. Moreover, it precedes G 1/15 and G 1/16.

Further case law line with T 1222/11

G 1/16 (in particular, Reasons 43 ff.) confirms that only the criteria of G 1/03 are to be considered when the allowability of an undisclosed disclaimer is assessed, while the gold standard test of G 2/10 has no relevance under these circumstances.

G 1/16 explicitly cites T 1872/14 as thus incorrectly applying the gold standard test in a modified form to undisclosed disclaimers (see Reasons 24(2)(a) and (b) of G 1/16).

G 1/15 moreover confirms the conceptual identification of alternative subject-matter when assessing partial priorities and endorses the approach of T 1222/11 in determining the relevant disclosure of a priority document vis-à-vis a subsequent application (see Reasons 6.6 and also 2.4).

Furthermore, in T 282/12 (Reasons 2, in particular Reasons 2.5), the board held that, for reasons of consistency, the rationale of G 1/15 must also apply for deciding whether an application from which priority is claimed is the first application within the meaning of Art 87(1).

For the present board, G 1/15, together with T 282/12, clarifies that it has to be decided for each subject-matter whether it is the first application under Art 87(1).

Regarding the case at hand, T 282/12 thus also supports the finding that the claims of the MR cannot validly claim the priority of D0 for the subject-matter of Examples 4A-D and 5A since it had already been disclosed in D1/D1a.

The current board’s reasoning is also in line with T 311/18, which is directed to a similar situation and subsequent to G 1/15 and G 1/16.

Under Reasons 4, T 311/18 explains why the priority of certain subject-matter was not valid in view of a disclosure (D5) and why the addition of a corresponding undisclosed disclaimer was not allowable.

This case law subsequent to T 1872/14 thus also shows that the assumptions made in it are outdated. There has been no further case law following the approach of T 1872/14 since.

Self-collision and G 1/15

G 2/98 advocates a “narrow or strict interpretation” of the concept of the same invention and the right to priority, cf. Reasons 9 and T 1222/11, Reasons 9.1.

The board noted that the applicant already knew the content of their documents D1a/D1 at the time of filing the current application, and it was in their hands for the current situation not to occur.

For the board, it rests with an applicant to manage their patent portfolio in line with the provisions of the EPC if they want to avail themselves of, however large this portfolio may be, not least in the interest of legal certainty for third parties.

Besides, it is an inherent peculiarity of the patent system of the EPC that an applicant and a third party cannot always be treated the same as their roles are fundamentally different. Sometimes – in the words of the applicant – there will thus be a “disadvantage” on the side of an applicant, and sometimes on a third party’s side.

The concept of G 1/15 that alternative subject-matter encompassed by a generic claim may enjoy partial priority is beneficial in some situations, namely when it is to be assessed whether a priority document relates to the same invention. But it may be disadvantageous in other situations, namely when the nature of a priority document as the first application is at stake in view of an even earlier application by the same applicant.

While G 1/15 protects an applicant from a “poisonous priority” when they file a subsequent application within the priority period, a third party filing the same subsequent application would have to add an undisclosed disclaimer with all the related risks (e.g. that a disclaimer is not allowable if too much subject-matter is removed or if the inclusion of the disclaimer makes a technical contribution).

No referral

As the board has followed G 1/15 and G 1/16 and the relevant case law (also) subsequent to these EBA decisions, and as there was no subsequent contradicting case law under comparable circumstances, there is no room for a referral to the Enlarged Board of Appeal


It is manifest that Examples 4A-D and 5A were first disclosed in D1, and not in D0. The only possible conclusion is that the publication of Examples 4A-D and 5A in D0 was not their first publication, hence the priority claimed on the basis of D0 was not valid.

Since D1 was published in the priority interval it was prior art under Art 54(2) and a disclaimer under G 1/03 was not available.

It is only if D1 would have been withdrawn, abandoned or refused without having become open to public inspection and without leaving any rights outstanding that the priority of D0 would have been valid, cf. Art 87(4) and T 1222/11, Reasons 7.

According to G 1/03, Reasons 4, a disclaimer, not providing a technical contribution, which is allowable during the prosecution of a European patent application does not change the identity of the invention within the meaning of Art 87(1). Therefore, its introduction is allowable also when drafting and filing the European patent application without affecting the right to priority from the first application, which does not contain the disclaimer. This statement only applies if the priority is valid. This was not the case here.

The decision is interesting that it makes clear that the claim without the disclaimer is the relevant yardstick to start with. To check whether the priority is validly claimed is the second step.

The decision is also interesting in that it gives the responsibility for a series of applications to the applicant and that, depending on the situation, the applicant can have an advantage like partial priorities under G 1/15, but disadvantages can also occur.

Here the applicant should have withdrawn D1 in order for the priority based on D0 to be valid. T 1222/11, Reasons 9.4, is very clear in this respect.

G 1/15 can protect against “poisonous divisional applications“, but cannot apply when the priority claimed is not valid.

To sum it up: in view of the principles of multiple priorities and partial priority an: undisclosed disclaimer based on a disclosure in an earlier application by the same applicant is not allowed.

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