As some readers may know, questions relating to partial priority and to poisonous divisional applications have been referred to the Enlarged Board of Appeal of the European Patent Office (EPO) as case G 1/15.
In view of this pending referral, the President of the EPO has now decided to take an exceptional measure and to allow the proceedings before the examining and opposition divisions to be stayed in cases where the decision from these divisions will depend entirely on the outcome of G 1/15.
More specifically, in its notice, the EPO defines the four conditions to be met for the proceedings to be stayed as:
- an invention to which a claim is directed is not novel and/or inventive in the light of the prior art (including applications belonging to the same family, and the application from which priority is claimed), if the claim is not entitled to partial priority;
- the claim in question encompasses, without spelling them out, alternative embodiments having all the features of the claim (known as a generic "OR"-claim), ie, is 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;
- the priority document discloses only one or more (specific) embodiments covered by the claim in question (ie, the claim is a generalisation of the disclosure of the priority document), but not the subject-matter of the entire claim itself; and
- the outcome of the proceedings depends entirely on how the Enlarged Board of Appeal answers the points of law referred to it.
While items 1-3 relate to the question of whether a claim is entitled to partial priority, the last item seems to have been included to avoid having proceedings stayed where a decision could be reached of the EPO on other grounds. For example in cases where the examining or opposition division believes that the claims do not meet the added-matter requirements of the European Patent Convention (EPC), the proceedings would not have to be stayed as a decision to refuse the application or patent could be reached by the division, regardless of the outcome of G 1/15.
Last but not least, in all cases where the proceedings will be stayed, the examining and opposition divisions will inform the parties and any communications setting a deadline for responding will be withdrawn. The proceedings will resume once the decision on G 1/15 has been issued.
This decision will ensure that all parties are treated fairly which is of course laudable but, at the same time, it is also adding to the considerable weight already on the shoulders of the Enlarged Board of Appeal, which already has to deal with one of its most difficult and debated referrals.