Further news from the EPO – An allowable “non-human” disclaimer

Published on: 05 December 2012
by Dr. Christian Köster, Patent Attorney at Dennemeyer & Associates, Munich

In decision G 2/10, the Enlarged Board of Appeal of the EPO considered the question under which circumstances disclaiming explicitly disclosed subject-matter would amount to an inadmissible extension beyond the content of the originally filed application. In this respect, the Enlarged Board defined some criteria for a respective disclaimer being allowable. There is now a decision from a Technical Board of Appeal which sheds some light on these criteria.

In decision T 2464/10 of 25 May 2012, the Board was confronted with a patent claim directed to an animal defined as a “non-human” animal. The expression “non-human” was treated as a disclaimer, i.e. one which disclaims humans. The Board decided to test the compliance of this disclaimer with the pertinent Article of the European Patent Convention, Article 123(2) EPC, by applying the criteria established in G 2/10. More specifically, in the Board’s view, “the further test of whether the skilled person would, using common general knowledge, regard the remaining claimed subject matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed” was applicable (T 2464/10, Catchword).

Substantially, it was found that the preparation of the generally claimed “non-human” animal relied on the same procedure as would be the case for a human. The remaining claimed subject matter was therefore not considered a new disclosure not presented in the application as filed. Compliance of the disclaimer with Article 123(2) EPC was indeed acknowledged. However, no patent was granted, and the case was remitted to the first instance for further examination of substantial patentability requirements.