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EPO finds remedy to treat poisonous priority

EPO finds remedy to treat poisonous priority

05/12/16

EPO finds remedy to treat poisonous priority

The Enlarged Board of Appeal at the EPO has issued its order in case G 1/15 (relating to so-called “poisonous priority”).

The order states:

“Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect.”

This is responsive to the first of five questions referred to the Enlarged Board. As a reminder, the questions were as follows:

“1. Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic "OR"-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document?

2. If the answer is yes, subject to certain conditions, is the proviso "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" in point 6.7 of G 2/98 to be taken as the legal test for assessing entitlement to partial priority for a generic "OR" claim?

3. If the answer to question 2 is yes, how are the criteria "limited number" and "clearly defined alternative subject-matters" to be interpreted and applied?

4. If the answer to question 2 is no, how is entitlement to partial priority to be assessed for a generic "OR"-claim?

5. If an affirmative answer is given to question 1, may subject-matter disclosed in a parent or divisional application of a European patent application be cited as state of the art under Article 54(3) EPC against subject-matter disclosed in the priority document and encompassed as an alternative in a generic "OR"-claim of the said European patent application or of the patent granted thereon?”

Since the order confirms that the Enlarged Board has answered question 1 in the negative, then all the other questions, which were dependent on question 1 being answered in the affirmative, now all fall away and need not be answered.

From the order, it appears that an antidote has been found to the poison that may have been running through the veins* of some patent families.

A reasoned decision of the Enlarged Board has not yet been issued, but we will provide an update when the decision becomes available.

 

 

 

* With apologies to Alice Cooper.