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 -
source http://justpatentlaw.blogspot.com/2022/01/t-232718-deleting-disclaimer-violates.html