Editor's note: The case involves, To determine whether the modification of a claim is compatible "European patent convention" The first 123 (2) The general rule of the provisions of the article, Whether the same applies to undisclosed exclusions (undisclosed disclaimers) The problem of. Read on for more details!

[background] The case involves, To determine whether the modification of a claim is compatible "European patent convention" The first 123 (2) The general rule of the provisions of the article, Whether the same applies to undisclosed exclusions (undisclosed disclaimers) The problem of. The first G 0001/03 Number and control G 0002/10 The Administrative ruling has made it clear that claims can be modified by filing an undisclosed exclusion statement. At issue in this case is, The first G 0002/10 A declaration of exclusion determined by an administrative ruling that is applicable to publication (disclosed disclaimers) (An open declaration of exclusion means, Although the statement itself does not appear in the filing, However, the scope of topics excluded by this declaration can be found in the application documents, For example, Embodiments etc——Translator's note) The general gold standard (general gold standard) (The gold standard is: European patent application or disclosure of European patent content (specification, The claims and drawings attached) The scope of modification shall not exceed "European patent convention" The first 123 (2) The restrictions set forth in this article. Therefore, Any amendment to the application document, It should all include the common knowledge of the technical personnel in the field, Content that can be objectively obtained directly and unequivocally from all application documents submitted on the application date——Translator's note) , Does the same apply to undisclosed exclusions and how. In this case, Call for an expanded appeals board (Enlarged Board of Appeal) clarify, Whether the general gold standard is generally applicable to undisclosed exclusions? If the answer is yes, Can the above rules be applied separately, Or must work with No G 0001/03 The specific conditions set forth in the Administrative decision of? and, Apply if required to merge, Whether the specific applicable form needs to be modified? Exclusion declaration (Disclaimer) Refers to, Declaration by specific words, terminology, formula, The specific subject matter expressed as a compound or other element is excluded from the patent claims. The first G 0001/03 The administrative ruling stated that, "Exclusion declaration" Is a term "negative" Technical characteristics, That is, the above technical features are excluded from specific embodiments or scopes of a general topic. "Undisclosed exclusion statement (undisclosed disclaimer) " Refers to, Neither of these exclusions was disclosed in the filing of the application, Nor have subjects excluded by the statement been made public. The expanded Appeals Board adopted No G 3/89 Case No G 11/91 The general gold standard for case determination, Is to examine whether an amendment is in compliance "European patent convention" The first 123 (2) The basic standards stipulated in the article. This rule has become the subject of new scrutiny ( "European patent convention" The first 123 (2) article) , novelty ( "European patent convention" The first 54 article) And the validity of priority claims ( "European patent convention" The first 87 article) Standard method. This means that, Any changes made to the application documents, It shall be limited to what can be objectively obtained directly and clearly from all documents submitted on the application date by a person skilled in the field using common knowledge. [conclusion] Extend the appeal Board decision, Modifying a claim by introducing an undisclosed exclusion statement, The exclusion declaration must satisfy No G 0001/03 Order no 2. 1 Any of the conditions listed in the, In order to find compliance "European patent convention" The first 123 (2) Provision of article. The introduction of this exclusion statement must not make a technical contribution to the subject already identified in the submitted application. especially, Shall not alter or affect the outcome of the examination of creativity or full disclosure. Declare exclusions, Is limited to the purpose of restoring novelty or illustrating subjects excluded from patentability for non-technical reasons, And the necessary scope. The Expanded Appeals Board discussed various scenarios with the parties at the written and oral stages, Give a ruling in the case.

[comment] The Board of Expanded Appeals held that, Examine the compliance of modifying a claim by introducing a declaration of exclusion "European patent convention" The first 123 (2) Provision of article, If an undisclosed exclusion statement is introduced, Should adopt regulation G 0001/03 Method of examination for confirmation of decision; If a public exclusion declaration is introduced, Then the No G 0002/10 The gold standard is determined as a review method. The ruling states that, Another important consideration, In other requirements of patentability, Whether the position of the patent applicant or patentee has been improved. For that matter, The ruling cites No T 710/92 The conclusion of the administrative ruling, The content of an undisclosed exclusion statement shall not be considered in the request for review of the creativity of the application. To avoid censorship of creativity, Any non-conforming modification of the original technical features occurs. The Expanded Appeals Board expects that the above answers will establish uniform review principles, Assist the Appellate Board of the European Patent Office or the Department of Examination and the Department of Objections to decide whether to allow the applicant to amend the claim by submitting an undisclosed declaration of exclusion.

compile: Liu Dan, The source of Aisabri Legal Counsel: Esabaril (ELZABURU)