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.
|Jakob Pade Frederiksen|
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