Poisonous priority – less toxic now? Enlarged Board issues order in G1/15

The EPO’s Enlarged Board of Appeal has issued their answer to the questions referred to it concerning partial priority in referral G1/15. The answer is:

“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 Enlarged Board had been asked a first question as to whether partial priority may be refused for subject matter encompassed by a generic claim covering alternatives, even if that subject matter was disclosed in the priority application. It seems the answer to that question is essentially “no”. This means that the supplementary questions also referred to the Enlarged Board do not need to be answered, as they would only have come into play if the answer was “yes”.

They have not yet published their reasons, so it remains to be seen precisely how this should be interpreted. However, the order suggests a softening of some of the harsher positions (harsh for patent owners, at least) taken on partial priority by appeal boards leading up to the referral of the questions to the Enlarged Board. The wording of the order suggests that the Enlarged Board believes that it is possible for priority to be retained for subject matter and embodiments encompassed by a claim, even if these are not expressly called out in a claim.

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