T 0557/13 Clarification of clearly defined alternative subject-matters – Partial Priorities

January 2015

A long awaited referral to the EPO Enlarged Board of Appeal on “poisonous priorities” has come to light in T0577/13 arising from EP0921183.

The Board 3.3.06 (notably different to the Board associated with T 0571/10 and T1222/11) raised the question of the issues of “so called partial priority”.  In particular, how G 2/98 does not indicate in more detail how a limited number of alternative subject­ matters may be clearly defined in a claim using a generic term or formula.  The technical Board itself noted in a communication to parties in the case, that it understood how “the potential legal uncertainty perceived by the parties with regard to this point of law…might require clarification by means of a referral to the Enlarged Board of Appeal”. 

 And that is indeed what has happened.  We will wait with interest to see the specific questions that are referred.  The days of “poisonous priorities” could well be numbered…

If you would like further advice on the decision, please contact Dr Susan Keston or your usual HGF representative or visit our Contact Page to get in touch with your nearest HGF office.