In patent law, a disclaimer is an amendment consisting in limiting a claim of a patent or patent application by introducing a negative technical feature. It typically consists in excluding from a general feature specific embodiments or areas. During prosecution, such amendments are sometimes made by applicants to their application, with the hope of fulfilling some patentability criteria, such as the novelty criterion.
The allowability of disclaimers is usually subject to certain conditions, which may vary from one country to another.
European Patent Office (EPO)
Under the case law of the Boards of Appeal of the EPO, disclaimers are allowed only in certain circumstances, as confirmed in G 1/03 and G 2/03 decisions.
- "A disclaimer [which is not disclosed in the application as filed] may be allowable in order to:
- * restore novelty by delimiting a claim against state of the art under ;
- * restore novelty by delimiting a claim against an accidental anticipation under ; 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 non-technical reasons."
The reasoning of G 1/03 and G 2/03 applies to disclaimers which are not disclosed in the application as filed. In other words, these decisions relate to "(originally) undisclosed disclaimers".
According to decisions T 1050/99 of 25 January 2005, even if there is a disclosure of the subject-matter being disclaimed, the disclaimer may still qualify as an "undisclosed disclaimer":
- "Thus, there is a basis in the application for the subject-matter which is excluded in the claim. However, that subject-matter is presented as a part of the invention, not as an area which should be excluded or avoided. In this sense, the disclaimer is in fact an "undisclosed" disclaimer because there is no disclosure in the application as filed of the disclaimer per se."
Likewise, according to T 1559/05 of 15 November 2007, for a disclaimer to qualify as a "disclosed disclaimer" thus allowable under , it is not sufficient that the feature which is the subject of the disclaimer be disclosed in the application as filed. The negative limitation introduced into the claims, which could be for instance "... with the proviso that said plastic material is not TPX® 4-methylpentene-1 polymer from Mitsui Petrochemical Industries, Japan", must be disclosed in the application as filed as a disclaimer.
In contrast, in decision T 1139/00 of 10 February 2005 (in line with the European qualifying examination (EQE) Examiners Report for paper B 2005, Chemistry part ), the Board held that it was sufficient that the subject-matter excluded by the disclaimer be supported by the application as filed for it to be allowable under Art. 123(2) EPC. In other words, the Board held that decisions G1/03 and G2/03 were not relevant when the subject of the disclaimer is disclosed in the application as filed, even if not disclosed as a disclaimer.