Decision G 1/15 of the Enlarged Board of Appeal regarding Partial Priority

Recently, the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) issued decision G1/15 in which it is established that a generic ”OR” claim, i.e. a claim directed to a genus encompassing alternative subject-matters by virtue of one or more generic expressions or otherwise, may validly claim partial priority from a previously filed patent application, provided that the alternative subject-matter has been directly and unambiguously disclosed in the priority document.

“Partial priority” refers to cases in which only part of the claimed subject-matter is entitled to the priority date.

This decision puts an end to the previous situation with so-called toxic priorities where a European patent application or patent could be found to be invalid in view of its own priority application. Similarly, this will be an end to so-called poisonous divisionals where a divisional patent application or patent could be found to be invalid in view of its parent application.

In particular, this decision is important for the fields of technology, such as the fields of chemistry and biology, where it is common to generalise the disclosure of a priority application in a subsequently filed patent application by broadening of a chemical formulae, chemical composition, range etc. Thus, it is now clear that the subject-matter of a priority claim that is broadened in a later patent application will not be novelty destroying for the broadened claim provided that priority is validly claimed.

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Written by: 

Annika Unge Reis and Louise Tottie