Hoffmann Eitle - München, London

Hoffmann · Eitle Newsletter 3/2011 - G2/10 – Disclaimers for Disclosed Subject-Matter

Author(s): Klemens Stratmann and Nadja Muncke

The Hoffmann · Eitle Newsletter 3/2011 reviews decision G2/10 which the Enlarged Board of Appeal rendered on August 30, 2011 concerning the admissibility of a disclaimer whose subject-matter is disclosed in the application as filed as an embodiment of the invention. It can be expected that the EPO will change its current restrictive practice in view of this decision, again allowing disclaimers for disclosed subject-matter under certain conditions. However, the Enlarged Board of Appeal did not endorse the view that disclaiming disclosed subject-matter is always allowable. Hence, until further Board of Appeal decisions will bring more clarity as to the specific situations in which such disclaimers are allowable, there will remain a degree of uncertainty for some time.