G1/16 – Disclosed and undisclosed disclaimers at the EPO


The Enlarged Board of Appeal decision in G1/16 – “disclosed and undisclosed disclaimers” is now out, dated 18 December 2017:

The core question referred to the Board was whether the “gold standard” of G2/10 also had to be applied to undisclosed disclaimers according to G1/03. (If so, undisclosed disclaimers of G1/03 would always be unallowable because they would fail the remaining subject matter test. That is, once the undisclosed disclaimer is included in a claim does the part of the claim that remains have direct and unambiguous basis in the application?)

In summary, the EBA decided that different tests must apply to undisclosed and disclosed disclaimers. For undisclosed disclaimers the test of G1/03 exclusively applies and for disclosed disclaimers the test of G2/10 applies. Therefore undisclosed disclaimers do not need to pass the remaining subject matter test of G2/10.