In our August 2003 Newsletter, we reported on an EPO appeal board decision that had held that the EPO’s practice of permitting the inclusion of disclaimers of the prior art in claims to distinguish over such art should not be permitted unless there was a basis for the disclaimer itself in the application as filed. Two other boards of appeal referred this issue to the Enlarged Board of Appeal which had its hearing on the matter on December 8, 2003. A decision is still awaited. In the meantime, the EPO has announced that it is putting on hold all cases currently before the examining and opposition divisions where the outcome of the case depends upon the decision reached by the Enlarged Board.

An appeal board has, however, held in Fluorohydrocarbons/Lubrizol that whatever the decision of the Enlarged Board may be in cases where one is seeking to use a disclaimer to distinguish a prior publication, disclaimers should still be permitted to distinguish over earlier applications that were unpublished at the filing date of the application in suit.