Wednesday, 30 November 2016

G 1/15 (1) - Order from the Enlarged Board

The order of the decision of the Enlarged Board in the partial priority referral, G 1/15, was issued. The reasoned decision will be issued as soon as possible.

See file wrapper, and our earlier posts Poisonous or nothing wrong? and Referral: Mother poisonous for child?


  1. the decision cancels the criteria of G2/98 that partial priority may only be acknowledged for generic OR claims where they give rise to a limited number of clearly defined alternatives. In that, G1/15 represent a departure and not simply a further development of earlier rulings. As to the consequences (bearing in mind that what holds for identity of invention and partial priority also holds for the criteria of first application for that invention, cf. T1222/11):
    - priority shows range 10-20, application claims 5-25, disclosure in priority interval of 15: claims are novel (this is a CHANGE, see guidelines F-VI, 2.2 and T1877/08)
    - priority shows range 5-25, application claims 5-25, but US application filed by same applicant before priority and published in priority interval discloses 15: claims are not novel (this is a CHANGE - priority not first application for s.m. 15)
    - contrary to what I could read in other blogs, G1/15 should not lead to absurd consequences in cases such as this: priority shows copper, application claims metal, disclosure in priority interval of metal: the claims should not be split in mutually exclusive alternatives (copper / metal not copper), both being novel over metal; rather the claim enjoys partial priority for the subject-matter copper, but does not enjoy priority for metal as a whole, so that the claim is anticipated by metal.

    1. Note that the "metal not copper" alternative is necessary to regain novelty over the "poisonous" disclosure of "copper". (In case P1 discloses copper, the parent/divisonal disclose metal, for example copper, and "metal" is claimed.) Now "metal not copper" (unlike "metal") is indeed new over "copper", but it also (again unlike "metal") seems to be new over a 54(2) or (3) disclosure of "metal" in the priority interval.

  2. The decision says: Entitlement to partial priority may not be refused for a generic "OR"-claim provided that the alternative subject-matter has been disclosed for the first time in the priority document.

    How can this be considered to cancel the criteria of G2/98, or represent a departure or a change?