EPO decides: “No” to poisonous priorities
The Enlarged Board of Appeal has recently issued its much awaited order in the G 1/15 case relating to partial priorities of a generic claim.
Shortly summarized, this relates to the following situation. A first application is filed and discloses a specific embodiment (e.g., a screw). Later, a second application is filed and its claim relates to a more generic embodiment (e.g., means of attachment).
The question at issue is then whether the second application can validly claim the priority of the first application, as far as a screw is concerned – that is, whether the claim has a partial priority as far as it covers the screw. This is also relevant for the following reason: If the priority of the first application could not be validly claimed, it would destroy the novelty of the second application, as a specific embodiment (the screw) deprives the more general subject-matter (means of attachment) of novelty. This is why this scenario is also known as a “poisonous priority”.
The Enlarged Board of Appeal, which is the highest instance of the European Patent Office, has now ordered that the generic term can validly claim the partial priority of the more specific term previously disclosed. See the full order here.
This will be good news for patent applicants and patent practitioners!
