View source for G 1/03 and G 2/03

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! bgcolor="6699FF" | '''''G 1/03 and G 2/03'''''
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'''Enlarged Board of Appeal of the European Patent Office'''
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! bgcolor="6699FF" | Issued April 8, 2004
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! bgcolor="6699FF" | '''Board composition'''
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| '''Chairman:''' [[Peter Messerli]]
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| '''Members:''' R. Teschemacher, C. Andries, G. Davies, B. Jestaedt, A. Nuss, J.-C. Saisset
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! bgcolor="6699FF" | '''Headwords'''
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| ''Disclaimer/PPG'' (G 1/03), ''Disclaimer/GENETIC SYSTEMS'' (G2/03)
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'''G 1/03''' and '''G 2/03''' are two decisions of the [[Appeal procedure before the European Patent Office|Enlarged Board of Appeal]] of the [[European Patent Organisation|European Patent Office]] (EPO), which were both issued on April 8, 2004.

The decisions, which are identical, relate to the allowability of introducing [[disclaimer (patent)|disclaimer]]s during the prosecution of a [[European Patent Convention|European patent application]] or during [[Opposition procedure before the European Patent Office|opposition proceedings]] relating to a granted European patent. More precisely, they relate to whether and under which circumstances an [[Amendments under the European Patent Convention|amendment]] introducing a negative limitation to a [[claim (patent)|claim]] is allowable, when neither the negative limitation nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed ({{EPC Article|123|2}}).

== Decision ==

The Board ruled that introducing a disclaimer which has no basis in the application as filed may be allowable in order to:
# restore [[novelty (patent)|novelty]] by delimiting a claim against [[State of the art#Patent law|state of the art]] under {{EPC Article|54|3) and (4}}, i.e. against a novelty-destroying conflicting application (a first European patent application is said to be a "conflicting application" when it was filed before the effective [[filing date|date of filing]] of a second European patent application, but when this first application was published only after the effective date of filing of the second application);
# restore novelty by delimiting a claim against an accidental anticipation under {{EPC Article|54|2}}, where an anticipation is said to be accidental if it is so unrelated to and remote from the claimed [[invention]] that the [[person skilled in the art]] would never have taken it into consideration when making the invention; and
# disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from [[patentability]] for non-technical reasons. (''Headnote of the decision, item II.1'')

The Board however set out stringent criteria for their application (which have later led to many disclaimers being found inadmissible):<ref>{{cite video |people=Robert Young |date=8–9 November 2012 |title=EPO boards of appeal and key decisions: Disclaimers and their legal basis, especially in the light of decisions G 1/03, 2/03 and G 2/10 – possible consequences for their use as an instrument of patent prosecution (Part 3 of 3) |url=https://e-courses.epo.org/wbts/caselaw2012/index.html |publisher=European Patent Office |location=Munich, Germany |accessdate=November 10, 2013 |minutes=2:44 to 2:55}}</ref> 
* "a disclaimer should not remove more than is necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons"; (''Headnote, item II.2'')
* "a disclaimer which is or becomes relevant for the assessment of [[inventive step under the European Patent Convention|inventive step]] or [[disclosure of the invention under the European Patent Convention|sufficiency of disclosure]] adds subject-matter contrary to {{EPC Article|123|2}}"; and (''Headnote, item II.3'')
* "a claim containing a disclaimer must meet the requirements of clarity and conciseness of {{EPC Article|84}}". (''Headnote, item II.4'')

Decisions G 1/03 and G 2/03 only apply to "undisclosed disclaimers", i.e. disclaimers which are not disclosed in the application as filed. The framework of these decisions is limited to "(originally) undisclosed disclaimers".<ref>[https://www.epo.org/law-practice/case-law-appeals/recent/t060154eu1.html Decision T 0154/06] of 11 January 2008, Reasons 4.</ref><ref>{{cite video |people=Robert Young |date=8–9 November 2012 |title=EPO boards of appeal and key decisions: Disclaimers and their legal basis, especially in the light of decisions G 1/03, 2/03 and G 2/10 – possible consequences for their use as an instrument of patent prosecution (Part 1 of 3) |url=https://e-courses.epo.org/wbts/caselaw2012/index.html |publisher=European Patent Office |location=Munich, Germany |accessdate=November 10, 2013 |minutes=19:54 to 21:42 |quote=(...) the restricted framework of the decisions. They were talking about undisclosed disclaimers.}} See also "Part 3 of 3" 2:15 to 2:33 minutes in.</ref>

== See also ==
* [[Amendments under the European Patent Convention]]

== References ==
{{reflist}}

== Further resources ==
{{Further reading cleanup|date=October 2022}}
* {{cite video |people=Robert Young |date=8–9 November 2012 |title=EPO boards of appeal and key decisions: Disclaimers and their legal basis, especially in the light of decisions G 1/03, 2/03 and G 2/10 – possible consequences for their use as an instrument of patent prosecution |url=https://e-courses.epo.org/wbts/caselaw2012/index.html |publisher=European Patent Office |location=Munich, Germany |accessdate=November 10, 2013}}
*{{EPO Case law book 2022|i|a|1}}: "Patent protection for technical inventions"
*{{EPO Case law book 2022|i|b|4|4|5|b}}: "Avoiding the exclusion of methods of treatment by surgery from patent protection under {{EPC Article|53|c}} - disclaimer"
*{{EPO Case law book 2022|i|c|4|10}}: "Determining the disclosure of the relevant prior art - accidental disclosure"
*{{EPO Case law book 2022|ii|c|1}}: "Sufficiency of disclosure - introduction"
*{{EPO Case law book 2022|ii|c|3|2}}: "Parts of the application relevant for assessing sufficiency of disclosure - alleged effect not a feature of the claims"
*{{EPO Case law book 2022|ii|c|5|2}}: "Clarity and completeness of disclosure - indication of at least 'one way'"
*{{EPO Case law book 2022|ii|c|5|4}}: "Clarity and completeness of disclosure - invention to be performed over whole range claimed"
*{{EPO Case law book 2022|ii|c|5|5|1|a}}: "Ambiguous parameters - essential parameters"
*{{EPO Case law book 2022|ii|c|6|1}}: "Reproducibility - repeatability"
*{{EPO Case law book 2022|ii|c|6|8}}: "Reproducibility - post-published documents"
*{{EPO Case law book 2022|ii|c|7|2|1}}: "Level of disclosure required for medical use – plausibility - principles established by the case law"
*{{EPO Case law book 2022|ii|c|7|3}}: "Level of disclosure required for antibodies"
*{{EPO Case law book 2022|ii|d|3|1|2}}: "G 2/98 and the concept of disclosure – interpretation in the same way as for {{EPC Article|123|2}}"
*{{EPO Case law book 2022|ii|d|3|1|6}}: "Enabling disclosure in the priority document"
*{{EPO Case law book 2022|ii|d|4|1}}: "First application in respect of the invention - identity of invention"
*{{EPO Case law book 2022|ii|d|5|3|3}}: "Multiple priorities or partial priority for one claim - application of G 1/15 in the jurisprudence of the boards"
*{{EPO Case law book 2022|ii|e|1|1}}: "{{EPC Article|123|2}} – added subject-matter - general principles"
*{{EPO Case law book 2022|ii|e|1|6|2|a}}: "Selections from two lists – singling out a combination of features - principles"
*{{EPO Case law book 2022|ii|e|1|7|1}}: "Disclaimers - definition"
*{{EPO Case law book 2022|ii|e|1|7|2}}: "Disclaimers - standards for examining disclosed and undisclosed disclaimers"
*{{EPO Case law book 2022|ii|e|1|7|2|a}}: "Disclaimers - standards for examining disclosed and undisclosed disclaimers - principles established in G 1/03 and G 2/03 for undisclosed disclaimers"
*{{EPO Case law book 2022|ii|e|1|7|2|b}}: "Disclaimers - standards for examining disclosed and undisclosed disclaimers - principles established in G 2/10 for disclosed disclaimers"
*{{EPO Case law book 2022|ii|e|1|7|2|c}}: "Disclaimers - standards for examining disclosed and undisclosed disclaimers - explanations in G 1/16"
*{{EPO Case law book 2022|ii|e|1|7|3|a}}: "Disclaimers - decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16 - accidental anticipation"
*{{EPO Case law book 2022|ii|e|1|7|3|b|i}}: "Disclaimers - decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16 - accidental anticipation - disclosure of the interfering document not novelty destroying"
*{{EPO Case law book 2022|ii|e|1|7|3|b|iii}}: "Disclaimers - decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16 - accidental anticipation - disclaimer covered more than what was disclosed in the prior art"
*{{EPO Case law book 2022|ii|e|1|7|3|d}}: "Disclaimers - decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16 - drafting of disclaimers – delimitation against any potential prior art"
*{{EPO Case law book 2022|ii|e|1|7|3|e}}: "Disclaimers - decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16 - drafting of disclaimers – clarity"
*{{EPO Case law book 2022|ii|e|1|7|3|f}}: "Disclaimers - decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16 - drafting of disclaimers – undisclosed disclaimer must not relate to the teaching of the invention"
*{{EPO Case law book 2022|ii|e|1|7|3|g}}: "Disclaimers - decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16 - drafting of disclaimers – positive features – G 1/03 not applicable"
*{{EPO Case law book 2022|ii|e|1|7|3|h}}: "Disclaimers - decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16 - drafting of disclaimers – negative feature implicitly disclosed in original application – G 1/03 not applicable"
*{{EPO Case law book 2022|ii|e|1|7|5}}: "Disclaimers - applicability of the decisions of the enlarged board to cases already pending"
*{{EPO Case law book 2022|ii|e|1|7|6}}: "Disclaimers - no analogy with G 1/03 where a disclaimer already in the application as filed is deleted"
*{{EPO Case law book 2022|ii|e|1|15}}: "{{EPC Article|123|2}} – added subject-matter - "comprises", "consists of", "consists essentially of", "contains""
*{{EPO Case law book 2022|ii|e|3|2|1}}: "Relationship between {{EPC Article|123|2}} and {{EPC Article|123|3}} - attempts to resolve the conflict - general"
*{{EPO Case law book 2022|iii|a|6|1}}: "Legitimate expectation and case law - case law deviating from or overruling the practice"
*{{EPO Case law book 2022|iii|h|1|2|3}}: "Application of the rules of interpretation - teleological interpretation"
*{{EPO Case law book 2022|iii|n|2|4}}: "Formal requirements - anonymously filed observations"
*{{EPO Case law book 2022|v|a|3|1|7|f}}: "Exceptions to the prohibition of reformatio in peius - undisclosed disclaimer"

== External links ==
* Decisions on the "''EPO boards of appeal decisions''" section of the EPO web site:
** [https://www.epo.org/law-practice/case-law-appeals/recent/g030001ep1.html G 1/03], {{ECLI|ECLI:EP:BA:2004:G000103.20040408}} 
** [https://www.epo.org/law-practice/case-law-appeals/recent/g030002ep1.html G 2/03], {{ECLI|ECLI:EP:BA:2004:G000203.20040408}}
* {{EPC Article|123|2}}

{{Decisions and opinions of the Enlarged Board of Appeal of the European Patent Office}}

{{DEFAULTSORT:G 1 03 and G 2 03}}
[[Category:Case law of the Enlarged Board of Appeal of the European Patent Office|G 2003 1 and G 2003 1]]
[[Category:2004 in case law]]
[[Category:2004 in Europe]]