Following a referral to the EPO's Enlarged Board of Appeal
relating to the issue of so-called "poisonous
divisionals" (discussed in
our previous article), it appears that such problems will no
longer trouble applicants.
The issue of "poisonous divisionals" has resulted in
such seemingly paradoxical problems as the claim of a parent
application being held to lack novelty over an embodiment described
in its own divisional application.
Yesterday, the Enlarged Board of Appeal wrote to the President
of the EPO enclosing a copy of its order in this decision, and
advising that the full reasoned decision (G 1/15) will be issued as
soon as possible. However, it seems clear from the wording of the
order that the problem of poisonous divisionals, and the related
problem of toxic priority, are set to disappear.
In an interlocutory decision (T 0557/13) the Technical Board of
Appeal referred five different questions to the Enlarged Board of
Appeal. However, in the event, the Enlarged Board of Appeal found
it necessary to answer only the first of these questions. In view
of the answer to the first question, questions two to five no
The first question referred to the Enlarged Board of Appeal was
1. Where a claim of a European patent application or patent
encompasses alternative subject-matters by virtue of one or more
generic expressions or otherwise (generic "OR"-claim),
may entitlement to partial priority be refused under the EPC for
that claim in respect of alternative subject-matter disclosed (in
an enabling manner) for the first time, directly, or at least
implicitly, and unambiguously, in the priority document?
The order issued by the Enlarged Board of Appeal effectively
answers "no" to this question. That is, entitlement to
partial priority may not be refused, provided the conditions set
out in the question are met.
The order states,
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
The wording, "No other substantive conditions or
limitations apply in this respect" is significant, as this
marks a departure from the earlier Opinion G2/98 of the EPO's
Enlarged Board of Appeal, which stated,
The use of a generic term or formula in a claim for which
multiple priorities are claimed ... is perfectly acceptable...
provided that it gives rise to the claiming of a limited
number of clearly defined alternative subject
The requirement for "a limited number of clearly defined
alternative subject matters" caused a great deal of confusion,
and inconsistency in the case law. It appears that this
requirement will no longer apply.
We shall be in a position to advise more fully on these issues
once the full reasoned decision becomes available. However, in the
meantime the order appears to be good news for patent applicants.
Applicants filing a European patent application (or PCT application
intended to enter the European regional phase) are likely to be
able to broaden the disclosure of the priority application, without
the need to worry about the problems of poisonous divisionals or
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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The focus on the product being obvious or anticipated as at a certain date provides powerful protection and commercial certainty without conflicting with a patentee's ability to obtain patent protection.
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