13 November 2017

Undisclosed disclaimers at the EPO: current approach and future outlook

When making an amendment to a European patent application (or patent), the amendment must meet the requirements of Article 123(2) EPC, which states that “The European patent application or European patent may not be amended in such a way that it contains subject matter which extends beyond the content of the application as filed”.

Under current EPO practice, the affect of Article 123(2) is that the subject matter of an amendment must be “directly and unambiguously derivable from the application as filed”. This definition has come to be known as the ‘gold standard’ for assessing added matter. However, it is not presently clear whether this standard should be applied in all situations.

Typically, patent claims are drafted in terms of positive features, which define particular subject matter. However, even though this is established practice, under certain circumstances, it may be desirable to disclaim particular subject matter, resulting in a claim containing ‘negative’ features. For example, consider the following claim relating to group V elements (shown in the table):

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