A disclaimer refers to a single or multiple features in a claim, which typically excludes certain embodiments or parts of a general feature. Such a disclaimer can be introduced subsequently, particularly during the examination procedure or appeals procedure. It is important that the introduction of the disclaimer does not impermissibly amend the corresponding claim according to Art. 123 EPC.

According to the decision G 1/03 a disclaimer can be acceptable and does not violate Art. 123 (2) EPC if the disclaimer or the excluded part of the application cannot be derived from the original version (1. guideline G 1/03). In order to be acceptable a disclaimer has to meet the requirements of the 2. guideline of G 1/03.

The decision G 2/10 likewise relates to a disclaimer, which however does not meet the requirements of G 1/03 and further should exclude an embodiment disclosed in the application. According to G 1/03 the decision G 2/10 clarifies that the requirements, established in the 2. guideline of G 1/03, are not final. Particularly, each introduced disclaimer has to meet the requirements of Art. 123 (2) EPC according to which the feature remaining within the claim has to be disclosed in the original version of the application (1. guideline G 2/10).

A consequent consideration according to the decision G 2/10 did not occur by the technical Board of Appeal. Thus, not in all cases in which a disclaimer according to the decision G 1/03 exists the requirements of the decision G 2/10 were applied or at least reviewed.

With the use of a disclaimer during the examination procedure or appeals procedure the following criteria should be considered:

• referring to disclosed disclaimers the requirements of G 2/10 have to be taken into account
• referring to non-disclosed disclaimers the requirements of G 1/03 and additionally the requirements of G 2/10 have to be taken into account
• referring to the accomplishment of the requirements of G 1/03 a non-disclosed disclaimer can be impermissible (e.g. in accordance with generalizations or indirect selection invention)