Recently, the Enlarged Board of Appeal at the European patent office (EPO) issued its longed-fore decision in the case G1/15 and seemingly put an end to a previous somewhat harsh practice, according to which filing of additional applications could be devastating to a granted patent.
According to the decision, a broader, later claim cannot be anticipated by an earlier, narrower disclosure in an application from which it claims priority. Thus, a patent cannot be invalidated based on members of the same patent family, that is - no more toxic divisional or poisonous priorities.
In the decision it is stated that so called partial priority indeed could be accepted for a claim covering alternative subject matter due to one or more generic expressions, being broader than the corresponding more narrowly disclosed subject matter of the priority application.
The background of the decision is a number of decisions at the EPO Boards of Appeal in which European patent applications or patents were deemed to lack novelty over their own priority document (so called “poisonous priority”), their own divisional application (so called “toxic divisional”) or their own parent application, respectively. These decisions have their common basis in whether a priority application and a subsequent more generic application are related to the same invention or not.