G1/15: Reasoned decision on priority issued by EPO’s Enlarged Board

Today, the reasoned decision in case G1/15 at the European Patent Office’s highest appeal instance, the Enlarged Board of Appeal (EBA), was finally issued after the conclusion and order had previously been communicated on 29 November 2016 (as reported at the time).

The order stated that partial priority cannot be denied for generic claims if part of the invention is validly disclosed in the priority document. Already from this order, it was clear that the EBA had decided to end the practice of some lower-instance boards to invalidate patents based on members of the same patent family. This practice had been popularly referred to as “poisonous priorities” or “toxic divisionals”.

In the reasoned decision, the Enlarged Board explains the details behind its conclusion. The basis, used by some first instance boards, to refuse a right to partial priority has primarily been statements in a previous EBA decision, G2/98, to the effect that a generalised claim can only enjoy partial priority if certain conditions are met. In the reasons for G1/15 issued today, the EBA clearly has done away with this interpretation, saying that “the proviso laid down in G2/98 cannot be construed as implying a further limitation of the right of priority” (reasons 5.3).

While setting aside the statements on partial priority from G2/98, the EBA however also reinforced the conclusions from the earlier decision concerning the “disclosure test”. A right to priority, whether in whole or in part, only arises from the “same invention” in the earlier application if that “same invention” may be directly and unambiguously derived from the earlier application.

This reasoned decision reinforces the conclusions drawn from the order itself. In conclusion, it is now settled law under the EPC that a broader, later claim cannot be anticipated by an earlier, narrower disclosure in an application from which it claims priority. In other words, there are no more “poisonous priorities” or “toxic divisionals”.

The decision may be found here (PDF document, 1.6 MB)

Niklas Mattsson
Partner, European Patent Attorney