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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

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