EPO: EPO orders stay of proceedings
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

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 ros bottom lb

More from across our site

INTA has postponed its planned Annual Meeting in Dubai, but the organisation should think carefully about whether it wants to go there at all
The firm has named its new managing director after its former Asia head resigned earlier this year
As law firms explore how best to support clients at the UPC, members of the UPCLA network believe they have found the best of both worlds
The Industry Patent Quality Charter hosted a conference in which it discussed the importance of granting high-quality patents
Julia Holden explains why, if she weren’t in IP, she would be directing and producing live English-language theatre
The impact of the recently agreed treaty may be modest at first but is likely to become more significant over time
Meet the esteemed judges who are assessing the first-ever Social Impact Awards
Lawyers debate whether the Supreme Court’s ruling helps maintain confidence in the trademark system
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
The group of lawyers, which includes seven IP partners, say they were impressed by ArentFox Schiff's wide-reaching experience
Gift this article