OJ EPO 2016, A105 - Notice from the European Patent Office dated 29 November 2016 concerning the staying of proceedings due to referral G 1/16

1. Referral G 1/16 (Disclaimer/OLED) is pending before the Enlarged Board of Appeal. The three questions referred seek to clarify in particular whether the standard referred to in G 2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC (known as the "gold standard") applies to claims containing undisclosed disclaimers and, if so, how this is to be reconciled with the requirements laid down in G 1/03 for introducing undisclosed disclaimers. The three questions referred to the Enlarged Board are set out in decision T 437/14.

2. The President of the EPO has decided that, in view of the potential impact of the referral, all proceedings before EPO examining and opposition divisions in which the decision depends entirely on the outcome of the referral will be stayed ex officio until the Enlarged Board issues its decision.

3. This concerns cases in which

  • a claim is amended by the introduction of an undisclosed disclaimer, i.e. neither the disclaimer nor the subject-matter to be excluded were disclosed in the application as originally filed, and
  • the undisclosed disclaimer meets the requirements of G 1/03 for introducing it, but not the criteria ("gold standard") laid down in G 2/10 for assessing compliance with Article 123(2) EPC, and
  • the outcome of the proceedings depends entirely on how the Enlarged Board answers the questions of law referred to it.

4. If proceedings are stayed, the examining or opposition division concerned will inform the parties accordingly (see Guidelines for Examination at the EPO, E-VI, 3). At the same time, it will withdraw any communications setting them time limits to react, and will despatch no further such communications until the Enlarged Board has given its decision, whereupon a communication will be issued concerning the resumption of proceedings.

5. The present notice is immediately applicable, and limited to those cases affected by referral G 1/16.