Full decision of Enlarged Board of Appeal in partial priority / poisonous divisionals referral (G01/15) published

No more from divsionals

On 29 November 2016, the Enlarged Board of Appeal at the EPO had issued its order in case G 1/15, but not yet its decision. The Enlarged Board has said:

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.

A generic "OR"-claim is one that covers multiple alternatives without spelling them out. If such a claim can have partial priority to an earlier application that disclosed one of those alternatives, then the implication is that the publication of the earlier (priority) application cannot deprive the later application of novelty under Article 54(3) EPC.

The full decision with reasons has been published now. You should read the whole thing, here are a few key reasons:

5.1.3 If a claim in the later application is broader than an element disclosed in the priority document, then priority may be claimed for such element but not for all other embodiments encompassed by the claim or claims. This principle applies for each individual element disclosed in a priority document. It does not matter whether partial priority is claimed for one element in a priority document only, for a plurality of elements disclosed in one priority document (first Situation addressed in Article 88(3) EPC), for a plurality of elements disclosed in more than one priority document (second situation addressed in Article 88(3) EPC) or for a plurality of elements disclosed in a plurality of priority documents (situation addressed in Article 88(2), second sentence, EPC). It is also of no relevance whether one claim for which partial priority is claimed encompasses only one element disclosed in a priority document or a plurality of elements disclosed in one or more priority documents. The situation where one claim encompasses elements disclosed in a plurality of priority documents is specifically addressed in Article 88(2), second sentence, EPC.

The decision then goes on to quote extensively from the FICPI Memorandum on multiple priorities and endorses its approach and states in 5.3:

5.3 It is thus to be concluded that the EPC does not contain other requirements for recognising the right of priority beyond the same invention, whether for simple, multiple or partial priority, the last being regarded as a sub-group of multiple priorities.

As a consequence, the proviso laid down in G 2/98, (supra, Reasons point 6.7, last sentence), cannot be construed as implying a further limitation of the right of priority.

The state of poisonous divisionals

Reasons 6.4 and 6.5 explain how to assess whether subject matter within a generic "OR" claim may enjoy partial priority:

 6.4 In assessing whether a subject-matter within a generic OR" claim may enjoy partial priority, the first step is to determine the subject-matter disclosed in the priority document that is relevant, i.e. relevant in respect of prior art disclosed in the priority interval. This is to be done in accordance with the disclosure test laid down in the conclusion of G 2/98 and on the basis of explanations put forward by the applicant or patent proprietor to support his claim to priority, in order to show what the skilled person would have been able to derive from the priority document. The next step is to examine whether this subject-matter is encompassed by the claim of the application or patent claiming said priority. If the answer is yes, the claim is de facto conceptually divided into two parts, the first corresponding to the invention disclosed directly and unambiguously in the priority document, the second being the remaining part of the subsequent generic OR"-claim not enjoying this priority but itself giving rise to a right to priority, as laid down in Article 88(3) EPC.

6.5 This also corresponds, logically and exactly, to the scheme described in the Memorandum (see point 5.2 above): "If a first priority document discloses a feature A, and a second priority document discloses a feature B for use as an alternative to feature A, then a claim of the application directed to A or B will in fact consist of two distinct parts A and B respectively, each complete in itself...", and further: "... it would be appropriate to claim a partial priority in situations corresponding to the "OR"-situation under Multiple Priorities", the European patent application itself taking the place of the second priority document.

6.6 The task of determining what is the relevant disclosure of the priority document taken as a whole, and whether that subject-matter is encompassed by the claim in the subsequent application, is common practice in the EPO and among practitioners of the European patent system and as such should not pose any additional difficulty. Nor does it create uncertainty for third parties, as argued by the respondent and in some amicus curiae briefs. Although it can be a demanding intellectual exercise, the decisions reached in cases T 665/00, T 135/01, T 571/10 and T 1222/11 all show that it can be carried out without any need for additional tests or steps.

6.7 From this analysis it follows that the assessment of entitlement to partial priority right does not show that any additional requirements are needed.

From 6.4 it seems to follow that poisonous divisionals are truly dead. The floor (comment section) is yours.