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G1/15: Decision by the Enlarged Board of Appeals (EBA)

The Enlarged Board of Appeals (EBA) has now issued its reasoned decision for G1/15 explaining how partial priority is to be assessed for so-called generic “OR” claims which cover but do not explicitly spell out several alternatives.

The decision in G1/15 will be comforting news for patent owners, eliminating some of the ambiguity formerly surrounding the original priority test set down in G2/98, and clarifying when a claim can enjoy partial priority. However, the decision is bad news for those trying to invalidate European patents or prevent grant of European applications, because “poisonous” attacks now no longer seem to be available.

For an overview of the background leading up to G1/15, please refer to our previous article published when the outcome was announced in November 2016.

The reasoned decision sets out a two-step test for determining whether or not a generic “OR” claim should be entitled to partial priority. The steps of this test are as follows:

  1. 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; then
  2. examine whether this subject-matter is encompassed by the claim of the application or patent claiming said priority (i.e. encompassed by the later generic “OR” claim).

If the subject-matter disclosed in the priority document is found to be encompassed by the generic “OR” claim, the claim is de facto conceptually divided into two parts.  The first part corresponds to the invention disclosed directly and unambiguously in the priority document and the second part is the remaining subject matter which is not entitled to priority. This two-step test seems to be an endorsement of the earlier “generous” approach of some Boards such as when assessing partial priority.

The following simplified example illustrates the application of the new test:

  • The priority application (P) has a claim specifying the range “A is from 1 to 10” and an example with A = 5.
  • A subsequent EP application (S) containing all the material from P together with extra material relating to A being greater than 10 is filed. S claims priority from P has a claim specifying the range “A is from 1 to 20”.
  • A divisional application (D) based on S and claiming priority from P is filed.

Both S and D claim priority from P.  If the claim of S is not entitled to priority but the priority claim is valid for D, under European law D is available to assess the novelty of the claims of S.

Applying the test, the relevant subject matter from the priority document is that “A is from 1 to 10”.  This is clearly encompassed by the claim of S which specifies “A is from 1 to 20”.  Accordingly, the claim can be divided into two parts:

  • A is from 1 to 10
  • A is from greater than 10 to 20

The first part has a valid priority claim to P but the second part is not entitled to priority.  Accordingly, the claim enjoys partial priority.  For the first part, the valid priority claim means that D is not prior art.  There is no disclosure in P of the subject matter of the second part and thus, D is also not entitled to priority for this subject matter. Accordingly, D cannot be used to anticipate P.

The EBA points out that its approach is consistent with the FICPI Memorandum C (M/48/I) of the preparatory work setting up the EPC 1973, and it seems that this may have been one of the key documents guiding the EBA’s decision.

The legal precedent set down in G1/15 runs contrary to earlier Board of Appeal decisions in which European patents having generic “OR” claims were denied partial priority and revoked using applications within the same patent family as prior art. Accordingly, G1/15 appears to provide the antidote to all so-called “poisonous” applications.

A number of cases were stayed in anticipation of G1/15, and in the coming months we can expect many decisions from the technical Boards of Appeal following the precedent set down in G1/15. These decisions will give greater clarity on how the test is implemented in practice by the European patent office.  Furthermore, although G1/15 is not binding on UK courts, current harmonisation between UK and European laws means that future UK court decisions are likely to be strongly influenced by this case.

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