Decision G1/15 (Partial Priority) gets rid of “Poisonous Divisionals”

The Enlarged Board of Appeal of the European Patent Office has now issued its long awaited decision in case G 1/15 (Partial Priority). The essential question before the Enlarged Board in this case was whether a claim that encompasses alternative embodiments by virtue of a generic expression, instead of individually listing them in the claim, may enjoy partial priority, that is the priority of an earlier patent application only for some of the embodiments falling under the generic expression. This question arises, for instance, in cases where the later application has a claim directed to a generic chemical formula, which encompasses multiple compounds, the earlier application, however, only individually discloses some of the compounds that are encompassed by the generic formula, but not the generic formula itself. According to the Enlarged Board, for the purposes of claiming partial priority, it does not make a difference whether a claim generically encompasses multiple alternatives or whether a claim individually lists all alternatives. This decision has far reaching consequences in that it effectively gets rid of the issue of “Poisonous Divisionals” and “Toxic Priorities”, which has troubled applicants and patentees for quite some time.