The test for added subject matter


7.110 Applicants will often use disclaimers as a means to overcome novelty and inventive step objections during amendments. These are generally in the form of a proviso or similar statement excluding specific embodiments or groups from the original claim.

7.111 Amendments to incorporate disclaimers will generally be allowable if the matter remaining in the claim following amendment is clearly disclosed.

7.112 Of particular concern in this regard are so-called “undisclosed” disclaimers. An undisclosed disclaimer is one that is not disclosed as such in the original specification or the subject matter excluded by it is not disclosed in the original specification.

7.113 Whether or not the incorporation of an undisclosed disclaimer is to be considered as added matter depends on the circumstances of the individual case. Generally, an undisclosed disclaimer is not allowable if:

(i) it is used to exclude embodiments that do not work or in order to address an objection of lack of sufficiency;
(ii) it makes a technical contribution.

7.114 If the incorporation of an undisclosed disclaimer, although limiting the subject-matter claimed in the original application, provides a technical contribution to the working of the invention thereby giving an unwarranted advantage to the applicant, it would be considered to constitute added matter (see G1/93 “Advanced Semiconductor Products”).

7.115 Examples of an “undisclosed” disclaimer that makes a technical contribution and may be subjected to an added matter objection include:

(1) one that excludes a feature, the exclusion of which makes a technical contribution to the working of the invention;

(2) one that leads to a selection invention of compounds or sub-classes of compounds not disclosed in the application as filed or otherwise derivable therefrom; or

(3) an intermediate generalization, which is not explicitly mentioned or implicitly disclosed in the application as filed.

7.116 If, on the other hand, the incorporated disclaimer merely excludes part of the subjectmatter from the originally claimed invention, which does not provide any unwarranted advantage to the applicant or adversely affect the interests of third parties relying on the content of the original application, it would be allowable (see G1/93 “Advanced Semiconductor Products”).

7.117 In particular, the EPO Enlarged Board of Appeal set out several specific criteria under which an undisclosed disclaimer would be considered allowable in G1/03 “Disclaimer/PPG” and G2/03 “Disclaimer/Genetic Systems”. When applied to the Singapore context, this would be set up as follows:

(a) Avoiding a document cited under section 14(3): namely, a conflicting Singapore patent application published after the priority date.

Different applicants may be entitled to different aspects of an invention based on their respective priority dates and the matter in each claim. A disclaimer in this situation merely reflects the respective rights of each applicant in this regard.

(b) Avoiding an accidental anticipation in an unrelated field that the person skilled in the art would never take into consideration because it relates to an unrelated field or the skilled person would not consider the subject matter helpful to the invention.

This is typical in the area of chemistry, where searches of claims to a broad chemical class useful for a particular treatment will uncover prior art compounds having a different unrelated use. Thus a disclaimer to exclude one or more specific compounds would be allowable.

(c) Avoiding subject matter that is excluded from patentability, including inventions that are considered non-industrially applicable such as methods of treatment of the human body, or inventions that are considered offensive, immoral or antisocial.

For example, where a particular treatment could be used for medical treatment but also for cosmetic, non-medical treatments, a disclaimer to exclude the medical treatment would generally be allowable (see Section C in Chapter 8).