• Dr. Jochen Kapfenberger

EPO decision on prejudice to novelty of parent and divisional applications

Relief for patentees and applicants with regard to so-called “poisonous divisionals”.

Düsseldorf, 6 December 2016 – The Enlarged Board of Appeal of the European Patent Office (EPO) on 29 November ruled that patent claims in which one or more generic terms are used (so-called "generic OR claims”) shall be given partial priority for the features that are included in these terms and were initially disclosed in the priority application (decision G 1/15).

The decision by the Enlarged Board of Appeal deals with the following questions, which came up in proceedings between the companies Infineum USA L.P. and Clariant Produkte GmbH Ltd.: Should a subsequent application be refused the right of priority if it generalizes the original disclosure through a generic term? And could this case cause a divisional application to be opposed based on its parent application for reason of being prejudicial to novelty?

“With this decision, patentees in many cases no longer have to fear the loss of their patent protection due to their own disclosure within the same patent family”, says Dr. Jochen Kapfenberger, patent attorney and partner at COHAUSZ & FLORACK. Furthermore, applicants will be able to expand subsequent applications to a certain extent, without themselves running the risk of creating state of the art that is prejudicial to novelty.