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F&E Patent

Diclaimer II EPO

In the decision G02/10 the Enlarged Board of Appeal of the EPO had to consider the question whether an embodiment enclosed in the description of a patent application can be excluded from the scope of the claim via a disclaimer.

The Board decided that an amendment of a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed infringes Article 123(2) EPC if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.

The determination whether or not that is the case requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after the amendment.

Dr. Barbara Engels