5.3.11

Disclaimers not disclosed in the application as filed

(i)

restoring novelty over a disclosure under Articles 54(3) and (4) EPC;

(ii)

restoring novelty over an accidental anticipation under Article 54(2) EPC. "An anticipation is 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". The status of "accidental" should be ascertained without looking at the available further state of the art. A related document does not become an accidental anticipation merely because there are other disclosures even more closely related. The fact that a document is not considered to be the closest prior art is insufficient for achieving the status of "accidental". An accidental disclosure has nothing to do with the teaching of the claimed invention, since it is not relevant for examining inventive step. For example, this is the case when the same compounds serve as starting materials in entirely different reactions yielding different end products (see T 298/01, not published in OJ). A prior art, the teaching of which leads away from the invention, however, does not constitute an accidental anticipation; the fact that the novelty destroying disclosure is a comparative example is also insufficient for achieving the status of "accidental" (see T14/01 and T1146/01, both not published in OJ);

(iii)

removing subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons. For example, the insertion of "non-human" in order to satisfy the requirements of Article 53(a) EPC is allowable.

(i)

it is made in order to exclude non-working embodiments or remedy insufficient disclosure;

(ii)

it makes a technical contribution.

(i)

the limitation is relevant for assessing inventive step;

(ii)

the disclaimer, which would otherwise be allowable on the basis of a conflicting application alone (Article 54(3) EPC), renders the invention novel or inventive over a separate prior art document under Article 54(2) EPC, which is a not accidental anticipation of the claimed invention;

(iii)

the disclaimer based on a conflicting application removes also a deficiency under Article 83 EPC;