EPLAW PATENT BLOG

EPO – EBA decides on partial priorities and toxic divisionals – G 1/15

Posted: November 30th, 2016

EPO, Enlarged Board of Appeal, decision of November 29, 2016 in case G 1/15, to be published in OJ EPO

In its decision T 557/13, Technical Board of Appeal 3.3.06 had referred 5 questions to the EBA concerning partial priorities and toxic divisional applications. The first and most fundamental point of law was related to the question whether it followed from the EBA’s previous decision G 2/98 that a partial priority could not be acknowledged for a claim directed to alternative subject-matter resulting from generalisations disclosed in the application from which priority is claimed.

The EBA answered the first question as follows:

“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.”

The other 4 questions were only asked in case the answer to the first question was different. The reasons to the decision are not yet available, but are announced to be issued as soon as possible. Thus, a final evaluation is not yet possible. However, it appears that the problems caused by the interpretation of G 2/98 in T 1877/08, followed by other decisions and the practice of the first instance (Guidelines F-VI, 2.2) and even in a national decision (Nestec v Dualit [2013] EWHC 923 (Pat)) seem to be solved in line with the position taken in most amicus curiae briefs. Many proceedings in which partial priorities were contested were interrupted and can now be resumed.

Reported by: Rudolf Teschemacher

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