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11 November 2017

Practical implications of G1/15

In the previous edition of Inside IP, we reported a decision (G1/15) issued by the Enlarged Board of Appeal of the European Patent Office clarifying how partial priority is to be assessed. The decision addressed the concepts of “poisonous priorities” and “toxic divisionals” which have been the source of much debate over the last few years.

“Poisonous priorities” and “toxic divisionals” involve the potential prior art effect of unpublished documents (referred to as Article 54(3) documents in EPO practice). In summary, the Enlarged Board held in G1/15 that a generic claim encompassing alternative subject- matter may not be refused partial priority, provided that the alternative subject-matter has been directly and, at least implicitly, and unambiguously disclosed in the priority document. By endorsing a generous approach to partial priority, the Enlarged  Board effectively ruled out European patents being invalidated by so-called “poisonous priorities” and “toxic divisionals” but at the same time the Enlarged Board’s decision has affected other circumstances, and we look at such a scenario in this article.

In particular, we look at the effect this decision has had on the assessment of inventive step in which prior art has been published between the priority date and the filing date of a European patent/ patent application.

As background, partial priority now arises where the priority document discloses a feature, e.g. the range 4-6, and the subsequent application is broadened to disclose the range 1-10. Following G1/15 in assigning priority, the claim is split into two notional parts: the first specifying the range 4-6 as disclosed in the priority document and the second specifying the range 1-10 punctured by the range 4-6, i.e. ‘1-3 & 7-10’. The first part is assigned the filing date of the priority document; the second part is assigned the filing date of the subsequent application.

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