EPO: EPO orders stay of proceedings

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

EPO: EPO orders stay of proceedings

As we have previously reported, one of the EPO's chemical boards of appeal has referred the issue of entitlement to partial priority to the Enlarged Board of Appeal. The case is pending before the Enlarged Board under reference G 1/15.

As part of the G 1/15 referral, the Enlarged Board will have to consider under which circumstances, if any, a generic OR-claim is entitled to priority from an earlier application for some – but not all – of the subject matter covered by the claim.

By a notice given on October 2 2015, the president of the EPO has now decided that, in view of the potential impact of the G 1/15 referral, all examination and opposition proceedings in which the decision depends entirely on the outcome of G 1/15 will be stayed ex officio until the Enlarged Board issues its decision.

Cases are affected in which:

  • an invention to which a claim is directed is not novel and/or inventive in the light of the prior art if the claim is not entitled to partial priority (in the case of divisional applications, the prior art may in this case for example include the application's own parent or divisional);

  • the claim in question encompasses, without spelling them out, alternative embodiments having all the features of the claim (known as a generic OR-claim);

  • the priority document discloses only one or more embodiments covered by the claim in question, that is the claim being a generalisation of the disclosure of the priority document, but wherein the priority document does not disclose the subject matter of the entire claim itself; and

  • the outcome of the proceedings depends entirely on how the Enlarged Board decides in case G 1/15.

The President's decision has immediate effect.

Jakob Pade Frederiksen


Inspicos A/S

Kogle Allé 2

DK-2970 Hoersholm

Copenhagen, Denmark

Tel: +45 7070 2422

Fax: +45 7070 2423

info@inspicos.com

www.inspicos.com

more from across site and SHARED ros bottom lb

More from across our site

Value-added services give in-house counsel the satisfaction that they are getting more value for money, while law firms get the opportunity to win more work
A team at Boies Schiller Flexner is advising shoe company Kizik and parent company HandsFree Labs in the dispute
Nokia’s latest enforcement actions against Geely and Transsion joining Via LA’s AAC pool were also among the top talking points
Benjamin Kelly, the firm’s fifth IP partner hire in a little over one year, has experience in patent and trade secret disputes involving complex technologies
Half-year Talent Tracker data shows Pierson Ferdinand was among the most prolific hirers in the US, while in Europe, there has been a notable UPC swing
Exclusive data reveals in-house counsel want external legal advisers to build better client relationships and add value beyond routine work
Brett Sandford acted for Perplexity AI, which fended off the threat of a preliminary injunction to launch an AI-powered web browser
Stephen Yang joins us for our ‘Five minutes with’ series to explain why his role requires him to wear many hats
The complaint follows a declaratory ruling issued by the England and Wales High Court last month that said Samsung is entitled to an interim licence
Tobias Hahn explains how the firm's multi-jurisdictional setup enabled it to secure an injunction on behalf of Fujifilm relating to defendant Kodak’s non-UPC activity
Gift this article