President pauses processing of potentially poisonous priorities

Many readers will recall that the issue of poisonous priorities (and poisonous divisionals) is the subject of a referral to the European Patent Office (EPO) Enlarged Board of Appeal which is pending under reference G 1/15. For those readers who are wondering how a priority can be poisonous, take a look at the IPKat here, or Tufty the Cat's excellent post here, or for an impressively comprehensive discussion, the article by Malcolm Lawrence beginning on page 23 of in "epi Information" 1/2015, available here.

According to an announcement appearing yesterday on the EPO website, but carrying a date of October 2 (is this an error, the IPKat wonders, given that the date is exactly one month prior to the website publication date?), the President has decided to stay all proceedings before examination or opposition divisions where the outcome depends entirely on the answers that the Enlarged Board may give in G 1/15. The text of the announcement explaining how this will apply is repeated below.

It appears that the Examining or Opposition Division will inform parties when proceedings are stayed and will withdraw any communications with running time limits. Presumably, if readers have applications or oppositions where they believe this ought to apply, they can make a submission that the application ought to be stayed, especially if there is an impending time limit.

The Enlarged Board has also invited written comments on the issues in G 1/15, and announced the composition of the Board for the referral. If you want to make submissions to the Board, you must do so by March 1, 2015 2016. [ahem, yes, sorry about that]

Notice from the European Patent Office dated 2 October 2015 concerning the staying of proceedings due to referral G 1/15

1. Referral G 1/15 ("Partial priority") is pending before the Enlarged Board of Appeal. The questions referred seek, in particular, to clarify how Article 88(2), second sentence, EPC is to be applied in the light of the Enlarged Board's decision G 2/98 in cases where a claim encompasses, without spelling them out, alternative subject-matters having all the features of the claim (known as a generic "OR"-claim), and whether parent and divisional applications may be prior art under Article 54(3) EPC against one another in respect of subject-matter disclosed in a priority application but not entitled to priority. All five questions referred to the Enlarged Board can be found in decision T 557/13.

2. The President of the EPO has decided that, in view of the potential impact of the referral, all proceedings before EPO examining and opposition divisions in which the decision depends entirely on its outcome will be stayed ex officio until the Enlarged Board issues its decision.

3. This concerns cases in which

• an invention to which a claim is directed is not novel and/or inventive in the light of the prior art (including applications belonging to the same family, and the application from which priority is claimed), if the claim is not entitled to partial priority;
• the claim in question encompasses, without spelling them out, alternative embodiments having all the features of the claim (known as a generic "OR"-claim), i.e. is directed to subject-matter defined by one or more generic expressions, such as a chemical formula, a continuous range of numerical values or a functional definition;
• the priority document discloses only one or more (specific) embodiments covered by the claim in question (i.e. the claim is a generalisation of the disclosure of the priority document), but not the subject-matter of the entire claim itself; and
• the outcome of the proceedings depends entirely on how the Enlarged Board answers the points of law referred to it.

4. If proceedings are stayed, the examining or opposition division concerned will inform the parties accordingly. At the same time, it will withdraw any communications setting them time limits to react, and will despatch no further such communications until the Enlarged Board has given its decision, whereupon a communication will be issued concerning the resumption of proceedings.

5. The present notice is immediately applicable but limited to those cases affected by referral G 1/15.