T 2327/18 - Deleting disclaimer violates Art.123(3)

Key points

In this opposition case, the application was a divisional application. In the (divisional) application as filed, claim 1 includes a disclaimer (negative feature).
In the parent application as filed, the same disclaimer had been submitted in an auxiliary request in order to restore novelty over an Art. 54(3) prior right.
Claim 1 as granted in the present case does not include the disclaimer; claim 1 as granted is novel over the prior right document by virtue of other features of the claim. Hence, the disclaimer was deleted from claim 1 by an amendment made during prosecution. According to the opponent, this amendment violates Art. 123(2).
The Board considers the amendment to violate Art. 123(2) and points to G2/10, r. 4.5.5, penultimate paragraph, last sentence: "If by contrast, an embodiment is presented in the application as filed as not being part of the invention, but e.g. as belonging to the state of the art or as a comparative example, then it cannot be claimed at all."

See the comment below. Note that Enlarged Board hence says: "If by contrast, an embodiment is presented in the application as filed as not being part of the invention, then it cannot be claimed at all".

The patentee also makes an argument that it is an analogous case to G 1/03, but the Board does not accept that argument.
The patentee also based an argument on G1/05. The Board, in translation: “It is therefore not the case that a divisional application which, as originally filed, goes beyond the subject matter of the parent application as originally filed can be amended in such a way that it complies with Article 76 (1) EPC but not the requirements of Article 123 (2) EPC fulfilled.”
The Board then turns to auxiliary requests. The amendments at issue are not entirely clear to me, but the Board notes, in translation: “Therefore, these auxiliary requests also show a certain extension of the claimed subject-matter compared to the version originally filed and thus also do not meet the requirements of Article 123 (2) EPC."

I think it is quite unusual to see the "extension of scope of protection" test to pre-grant amendments, because that test is Art. 123(3).
As a further comment, the take home message could be: don't try circumventing G2/03 by including the disclaimer as negative feature in the application as filed.
G 1/93 is not cited in the present decision.

T 2327/18 -

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