I. Context of the referral

The decision G2/98 of the Enlarged Board of Appeal, relating to the interpretation of the notion of “same invention” in Article 87(1) EPC, mentioned that the use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2), second sentence, EPC is acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters.


However, the criterion of “giving rise to the claiming of a limited number of clearly defined alternative subject-matters” spelt out by G2/98 has not been interpreted uniformly by the Boards of Appeal of the European Patent Office.


Thus, in the decision T057/13, a Board of Appeal referred several questions to the Enlarged Board of Appeal, which we have presented in our IP Alert of October 2015. The first question was as follows:


"Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic "OR"-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document?"


The term generic “OR” claim was defined in the referring decision as follows:


"a "generic 'OR'-claim" is a claim directed to subject-matter defined by one or more generic expressions, such as a chemical formula, a continuous range of numerical values or a functional definition. Such a claim encompasses, without spelling them out, alternative subject-matters having all the features of the claim."

II. Decision of the Enlarged Board of Appeal

The Enlarged Board of Appeal has answered the above question as follows:


"Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect."


The Enlarged Board of Appeal argues that the EPC allows a partial priority, in particular in view of article 88 EPC and a memorandum C (M/48/I) of the Travaux préparatoires.


The Enlarged Board of Appeal details in the reasoning, that in a first step the subject-matter disclosed in the priority document that is relevant has to be determined, i.e. relevant in respect of prior art disclosed in the priority interval. In other words, it has to be shown what the skilled person would have been able to derive from the priority document.


In a next step, it has to be examined whether this subject-matter is encompassed by the claim of the application or patent claiming said priority. If the answer is yes, the claim is de facto conceptually divided into two parts, the first corresponding to the invention disclosed directly and unambiguously in the priority document, the second being the remaining part of the subsequent generic “OR”claim not enjoying this priority but itself giving rise to a right to priority.


The Enlarged Board of Appeal considers that this is a possible practice as in some decisions the boards of appeal have been able to do this, even if it can be a demanding intellectual exercise.

III. Conclusion

This decision of the Enlarged Board of Appeal gives more certainty about the concept of partial priority and the interpretation by the EPO.

If you have any questions concerning this newsletter, please contact Jacob Klinkisch.


This IP Alert is for information purposes only and does not constitute legal advice.


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