In the decision of the Enlarged Board of Appeal G1/15, based on a comprehensive analysis of the basic principles and the legislator’s intensions underlying the EPC, the Board just nailed it down. It seems that in the post-G1/15 world, there will not be much (if any) space left for so-called toxic or poisonous divisional applications.
Moreover, in the aftermath of G1/15, the previous vivid discussions about poisonous divisional applications seem to be a storm in a teacup, and one may ask himself whether it was worth the effort at all.
Despite of the legitimacy of this question, it is very probable that G1/15 will become an important milestone on the way of further development of the European case law. The decision, including the reasons of the decision, provides a lot of content of fundamental legal importance, which can influence not only European but also national patent practices, in particular in the case of double-patenting issues.
Not less notable, especially in view of the interlocutory decision T 557/13, are the comments of the President of the European Patent Office, in which inter alia the consistent application of the “gold standard” disclosure test to Articles 54, 76(1), 87 to 89 and 123(2) EPC has been reiterated.
In Reason 6.4 of G1/15, which is related to the entitlement to partial priority of a subject matter within a generic “OR” claim, a two-step approach is described. According to this approach, in the first step, the subject matter disclosed in the priority document that is relevant in respect to the prior art disclosed in the priority interval is determined in accordance with the disclosure test laid down in the conclusion of G 2/98 and on the basis of explanations put forward by the applicant or patent proprietor to support his claim to priority, in order to show what the skilled person would have been able to derive from the priority document. The second step described in Reason 6.4 is to examine whether this subject-matter is encompassed by the claim of the application or patent claiming said priority. If the answer is yes, the claim is de facto conceptually divided into two parts, the first corresponding to the invention disclosed directly and unambiguously in the priority document, the second being the remaining part of the subsequent generic “OR” claim not enjoying this priority.
This approach, however, assumes that the relevance of the disclosure for the generic “OR” claim has been already established, prior to carrying out the first step. For more clarity in this respect, it appears helpful to explicitly define at least one previous step in which the scope of relevance of the disclosure in the priority interval with respect to the generic “OR” claim under examination is established. Therefore, at this point, some clarification will probably become necessary, which would eventually lead to a three- or more-step method instead of two-step method described under Reason 6.4 of G1/15.
As demonstrated in the second step in Reason 6.4, the Board takes a strong stance in favour of the “de-facto-conceptual division” and thus puts under question the raison d’être of the concept of poisonous divisional applications as such.
It is interesting to note, that the “de-facto conceptual division” can play an important role on the national level as well, e.g. in double-patenting issues, in particular in the case of generic “OR” claims. This concept is also in accordance with the German national law regulating conflict situations between German and European patents designating Germany, with the same applicant and the same priority. According to §8 IntPatÜG, in the scope in which the invention is protected by a European patent, the German patent has no effect, implying that the range of overlap between the claims of the two conflicting applications can be regarded as an objectively or de facto given reality.
Thus, G1/15 can serve as encouragement for national authorities to apply the “de-facto conceptual division” on the national level, in particular in resolving double-patenting issues, especially in the countries in which the national legislation is rather vague in this respect.
I would like to encourage you to post your comments and suggestions below, as well as your ideas regarding the possible impact of this decision to the European or national practice in your country.