European Patent Office: End of self-collision
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

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

European Patent Office: End of self-collision

Towards the end of November 2016, the Enlarged Board of Appeal of the European Patent Office rendered its order in decision G 1/15, which brings an end to the phenomenon of so-called self-collision, also nicknamed toxic divisionals and poisonous priorities. On the date of completion of this article, the reasons for the decision have not been made available. The Enlarged Board's order is, however, clear in the sense that applicants no longer have to worry about self-collision.

The question addressed by the Enlarged Board relates to the citability under Article 54(3) EPC of a parent application against its own divisional or vice versa. Such citability is in principle possible if one of the parent or divisional applications includes specific disclosure, which is also disclosed in the priority document, and which is embraced by a generic claim in the other one of the parent and divisional. If such a generic claim is not entitled to priority in its entire scope, the generic claim would lose its entitlement to priority, in which case the specific disclosure in the parallel application would take away the novelty of the generic claim.

According to the Enlarged Board's order of November 29 2016: "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." In other words, a generic claim may enjoy partial priority for alternatives specifically disclosed in the priority document. As a result, there is no need any more for applicants to consider self-collision as a potential risk in relation to divisional applications, or in other instances of parallel applications sharing a common priority.

frederiksen.jpg

Jakob Pade Frederiksen

Inspicos P/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

The winners of the awards will be revealed at a gala dinner in New York City on April 25
Counsel debate the potential outcome of SCOTUS’s latest copyright case after justices questioned whether they should dismiss it
Each week Managing IP speaks to a different IP lawyer about their life and career
The small Düsseldorf firm is making a big impact in the UPC. Founding partner Christof Augenstein explains why
The court criticised Oppo’s attempts to delay proceedings and imposed a penalty, adding that the Chinese company may need to pay more if the trial isn’t concluded this year
Miguel Hernandez explains how he secured victory for baby care company Naterra in his first oral argument before the Federal Circuit
The UPC judges are wrong – restricting access to court documents, and making parties appoint a lawyer only to have a chance of seeing them, is madness
The group, which includes the Volkswagen, Seat and Audi brands, is now licensed to use SEPs owned by more than 60 patent owners
Managing IP’s Max Walters appeared on the latest episode of ‘Two IPs in a pod’, a regular podcast hosted by the UK patent attorney body, to discuss AI, awards and more
Sources at law firms say they have spent more than three years waiting for IP regulations and explain how the delay is affecting their business
Gift this article