The question whether a claim of a European patent or a European patent application can claim a partial priority is now pending before the EPO Enlarged Board of Appeal, i.e. the highest instance of the EPO. Specifically, the question is whether, when the priority document discloses a limited number of embodiment and the European patent or application claims a broader number of embodiments, the European claim is entitled to a partial priority (i.e. only for the embodiments which are also disclosed in the priority document) or whether it is not entitled to any priority at all.

The EPO has now announced that any third parties wishing to contribute to the debase on this issue before the Enlarged Board of Appeal takes its decision are given the opportunity to file written statements (so-called amicus curiae briefs). So as to be sure that such statements are given due consideration by the Enlarged Board of Appeal, they should be filed by 1 March, 2016. The statements will also be made available to the public by way of the section of the EPO website relating to referrals pending before the EPO Enlarged Board of Appeal.

Furthermore, it must be kept in mind that the relevance of the questions now pending before the Enlarged Board of Appeal is not tied to a specific field of technology or claim category. Rather, such questions can affect any claims of any pending European patent applications or granted European patents undergoing an opposition before the EPO or for which the opposition period has not yet expired. As a result, the EPO has now published an official notice indicating that all proceedings before the EPO Examining Division and Opposition Division in which the decision of those proceedings depends entirely on the outcome of the referral pending before the Enlarged Board of Appeal will be stayed ex officio until the Enlarged Board of Appeal issues its decision.

In its notice, the EPO has clarified that this procedural decision concerns cases in which

  • assuming that the claim is not entitled to partial priority, the claimed invention lacks novelty and/or inventive step in the light of the prior art

and

  • the outcome of the examination or opposition proceedings depends entirely on how the Enlarged Board of Appeal answers the questions referred to it.

The EPO has furthermore indicated that if the examination or opposition proceedings are stayed, the Examining Division or Opposition Division concerned will inform the parties accordingly. Furthermore, the Division in question will, at the same time as informing the parties about the stay of the proceedings, also will withdraw any communications setting time limits for the parties to react, and will not despatch any further communications until the Enlarged Board of Appeal has rendered given its decision. At that stage, the Examining Division or Opposition Division handling the proceedings will issue a communication informing the parties about the resumption of the proceedings.

This procedural decision of the EPO is immediately applicable. It can be applied to all pending European patent applications (i.e. it is not limited to European patent applications filed on after the referral was made to the Enlarged Board of Appeal earlier this year). It can also be applied to any granted European patents (i.e. it is not limited to European patents granted on after the referral was made).

Applicants of European patent applications, owners of European patents and their opponents will therefore keep this procedural decision in mind when handling their case, so as to ensure that they do not incur in a stay of the proceedings unless this is a strategically favorable move for their case.


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