The Scripps Research Institute, disclosed disclaimers (EPO, G 2/10, 2011)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Enlarged Board of Appeal held that an amendment introducing into a claim a disclaimer which excludes subject-matter disclosed in the application as filed infringes Article 123(2) EPC if the subject-matter remaining in the claim is not, explicitly or implicitly, directly and unambiguously disclosed to the skilled person. That determination requires a technical assessment of the circumstances of the case. The decision rules out applying the G 1/03 criteria to disclosed disclaimers and subjects them to the same test as positive limitations, for the sake of a uniform concept of disclosure.

Facts and procedure

The Scripps Research Institute filed European patent application No. 98 920 015.9 on catalytic DNA molecules, refused by the Examining Division on 2 February 2007 because the disclaimers in claim 1 had no basis in the application and did not meet the conditions of G 1/03 and G 2/03. Before Technical Board of Appeal 3.3.08, auxiliary requests II and III contained disclaimers whose subject-matter was disclosed as an embodiment of the invention. In T 1068/07 of 25 June 2010 the Board asked whether such a disclaimer infringes Article 123(2) EPC.

The applicable law

Article 123(2) EPC prohibits amending an application or patent so that it contains subject-matter extending beyond the content of the application as filed. Under G 3/89 and G 11/91, an amendment may only be made within the limits of what the skilled person would derive directly and unambiguously, using common general knowledge, from the whole of the documents as filed (point 4.3).

Question

Does introducing into a claim a disclaimer excluding subject-matter disclosed in the application as filed infringe Article 123(2) EPC?

Decision

The Board read the question as addressing disclaimed subject-matter rather than a single embodiment, since disclaimers may exclude whole groups (points 2.1 to 2.3). It held that G 1/03 concerned only disclaimers for which neither the disclaimer nor the excluded subject-matter had a basis in the application (points 3.1 to 3.9), a reading shared by the Court of Appeal of England and Wales in Napp v Ratiopharm and by the Hague District Court in Mundipharma v Sandoz (point 3.8). The G 3/89 and G 11/91 test remains the standard for any amendment (point 4.3), and G 1/03 did not establish that disclaiming disclosed subject-matter is always allowable (point 4.4.2).

After the amendment the skilled person may not be presented with new technical information (point 4.5.1). The point of reference is the subject-matter remaining in the claim, since a disclaimer defines what is not claimed (point 4.5.2). No rule of logic establishes that excluding an embodiment necessarily discloses the remainder (point 4.5.3). The assessment looks at the nature and extent of the disclosure, of the disclaimed subject-matter and of their relationship with what remains, under the same test as for a positive limitation: there is added matter where the disclaimer singles out an undisclosed compound or group of compounds or an intermediate generalisation (point 4.5.4). That the disclaimed subject-matter was presented as part of the invention is irrelevant; the applicant may limit its protection at its own risk under Articles 83, 84 and 56 EPC (point 4.5.5). The approach preserves a uniform concept of disclosure for Articles 54, 76, 87 and 123 EPC, in line with G 2/98 (point 4.6).

Key points for practice

• A disclaimer of disclosed subject-matter is assessed against the subject-matter remaining in the claim, not merely on the basis that the excluded matter was disclosed (point 4.5.2).
• The G 1/03 criteria do not govern disclaimers of disclosed subject-matter (points 3.9 and 4.7).
• The test is the same as for a positive limitation: a disclaimer singling out an undisclosed subgroup or intermediate generalisation adds matter (point 4.5.4).
• Practical point: before introducing a disclaimer, check that the remaining group is disclosed as such in the original application, which equally matters for divisionals and priority (point 4.6).

Provisions applied

European Patent Convention

Art. 54(2) and (3), 56, 61(1)(b), 76(1), 83, 84, 87(1), 123(2) and (3)

Case law cited

G 3/89; G 11/91; G 1/93; G 2/98; G 1/03; G 2/03; G 1/05; G 1/06; G 1/07; T 4/80; T 313/86; T 170/87; T 448/93; T 615/95; T 323/97; T 451/99; T 507/99; T 1050/99; T 1102/00; T 1139/00; T 1107/06; T 1068/07; Napp Pharmaceutical Holdings Ltd v Ratiopharm GmbH [2009] EWCA Civ 252; Mundipharma Pharmaceuticals BV v Sandoz BV, District Court of The Hague, 7 April 2010, No. 340373/09-2029

Related decisions

• Same invention, G 2/98, EPO Enlarged Board of Appeal, 31 May 2001, cited for the direct and unambiguous disclosure test and the uniform concept of disclosure.

Prepared by Dhenne Avocats from the text of the decision (epo.org, official English text), consulted on 11 October 2026. Only the official text is authoritative.