Decision at last …

EBoA (Enlarged Board of Appeal) decision at last


A recent decision of the EBoA (Enlarged Board of Appeal) has brought clarity to an area of European Patent Law in limbo from a referral to the EBoA back in 2015, and to decisions dating from 2010. The issue relates to an application (let’s call it A2) that includes a generic “OR” claim or one covering multiple alternatives and whether A can claim priority from a first, earlier filed application (let’s call it A1) disclosing one of the alternatives.

The question that created heated discussion in the IP world and that was the subject of the referral was whether the specific disclosure in A1 could give rise to a ‘partial’ priority for the later application A2 claiming multiple alternatives including that disclosed in A1. If it did not, then could the publication of the first application A1, if published as a European patent application, invalidate and destroy the novelty of the claims of A2?

This nuance arises due to the Art 54(3) EPC for European patent applications filed before but published after a subsequent application such as A2. Art 54(3) EPC provides that the earlier application A1 comprises the state of the art and therefore can be used for assessing the novelty only of the subsequent application A2.

The decision in G1/15 approves partial priority and also clarifies that A2 can claim an invention more broadly than disclosed in A1, and partial priority can be allowed for what is disclosed in the priority application A1. The later filed claim can be considered as divided into two parts, the first corresponding to the invention disclosed directly and unambiguously in the priority document, here A1, 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 (the right to priority is laid down in Article 88(3) EPC).

This is a relief for all as it means that a later application with an “OR” claim or a claim covering multiple alternatives can rely on partial priority from an earlier application A1 that discloses one of those alternatives.

The EBoA decision confirmes that the publication of the earlier (priority) application cannot deprive the later application of novelty under Article 54(3) EPC. There is no implied further limitation to the right of priority and the issue of poisonous priority and poisonous subsequently filed divisionals is now resolved./span>

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