Communication from the Enlarged Board of Appeal concerning case G 1/15

In accordance with Article 112(1)(a) EPC, Technical Board of Appeal 3.3.06 has referred the following points of law to the Enlarged Board of Appeal by interlocutory decision of 17 July 2015 in case T 557/13:

1. Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic "OR"-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document?

2. If the answer is yes, subject to certain conditions, is the proviso "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" in point 6.7 of G 2/98 to be taken as the legal test for assessing entitlement to partial priority for a generic "OR"-claim?

3. If the answer to question 2 is yes, how are the criteria "limited number" and "clearly defined alternative subject- matters" to be interpreted and applied?

4. If the answer to question 2 is no, how is entitlement to partial priority to be assessed for a generic "OR"-claim?

5. If an affirmative answer is given to question 1, may subject-matter disclosed in a parent or divisional application of a European patent application be cited as state of the art under Article 54(3) EPC against subject-matter disclosed in the priority document and encompassed as an alternative in a generic "OR"-claim of the said European patent application or of the patent granted thereon?

The text of the referral in English is available on the EPO website under http://www.epo.org/law-practice/case-law-appeals/pdf/t130557ex1.pdf.

The Enlarged Board of Appeal considering the referral will be composed as follows: W. van der Eijk (chairman), P. Carlson, I. Beckedorf, C. Vallet, F. Blumer, W. Sieber, H. Meinders.

Third parties are hereby given the opportunity to file written statements in accordance with Article 10 of the Rules of Procedure of the Enlarged Board of Appeal (OJ EPO 2015, A35) in one of the official languages of the EPO (English, French or German).

To ensure that any such statements can be given due consideration they should be filed by 1 March, 2016 with the Registry of the Enlarged Board of Appeal, quoting case number G 1/15.

Each statement should also be accompanied by a list of cited documents and copies on paper or, preferably, CD/DVD of any such documents not previously filed.

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