Posted on 21/6/2019

Undisclosed Disclaimers and Accidental Anticipation

A recent EPO decision addresses the allowability of amendments to a claim in a patent document.

A Board of Appeal of the European Patent Office has issued a Decision (T1218/14) which deals with the allowability of amendments to a claim in a patent document relating to so-called ‘undisclosed disclaimers’.

This decision may be of particular interest to in-house attorneys, especially in the chemical and food and drink industries, as well as for attorneys overseas whose practice differs from that in Europe.

A disclaimer is a claim amendment that introduces a negative feature, e.g.

1. A tool comprising a group 11 metal, wherein the metal is not copper.

There are two types of disclaimer: those disclosed in the patent application as filed (so called ‘disclosed disclaimers’), and those not disclosed in the patent application as filed (so called ‘undisclosed disclaimers’).

The Decision (T1218/14)

There are strict criteria governing the allowability of undisclosed disclaimers in proceedings before the European Patent Office. This Decision concerns one of those criteria, where an undisclosed disclaimer is used to restore novelty to a claim in view of an accidental anticipation, i.e. a novelty destroying disclosure that is completely unrelated to and remote from the claimed invention.

The European patent at issue related to a method of preparing a beverage, a beverage base, a beverage concentrate or a beverage additive in which a cross-linking enzyme is used to reduce the content of prolamin (gluten). In Opposition proceedings the patent was revoked for lack of novelty over a prior disclosure of a method for processing wheat flour dough containing a cross-linking enzyme to make a syrup. In Appeal proceedings the patentee submitted an amended set of claims in which claim 1 was amended to include an undisclosed disclaimer of the process described in the prior disclosure. The Board of Appeal hence examined whether the undisclosed disclaimer was allowable, and particularly whether the prior disclosure was ‘completely unrelated’ and ‘remote’.

Whilst the Board considered that the prior disclosure related to a different field of investigation (flour) from that of the claimed invention (beverages), it commented that the prior disclosure deals with the production of a beverage additive ‘in a side aspect’. In particular, the Board referenced a passage in the prior disclosure that states ‘[t]here are a vast number of areas in which starches may be applied, such as glucose syrup production and in sweetening production in general’. The Board reasoned that a skilled person would consider a sweetening product as suitable for use as a beverage additive. Accordingly, the Board decided that the prior disclosure was not remote from the invention so the criterion of ‘accidental anticipation’ was not met, and therefore that the undisclosed disclaimer was not allowable.

Nevertheless, the Decision to revoke the Patent was eventually set aside on the basis of an alternative set of claims which were limited a beverage (i.e. reference to beverage additives was removed). For more information on issues relating to patents, please contact one of our patent attorneys.

Wilson Gunn