Undisclosed Disclaimers

Video overview:

• A negative limitation (disclaimer) that has no basis in the original application can be used to:
  • Restore novelty over novelty-only prior art.
  • Restore novelty over an accidental anticipation (full prior art).
  • Remove subject matter that is excluded from patentability on non-technical grounds.
• Requirements for disclaimers:
  • Must exclude no more than necessary.
  • Should not affect inventive step or sufficiency.
  • The resulting claim must be clear and concise.
  • The disclaimer must be limiting.
• Caution:
  • Incorrectly drafted disclaimers risk falling into the Art.123(2)/Art.123(3) trap.