Enlarged Board – Poisonous Priority/Poisonous Divisional – Decision G1/15

10 March 2017

The full reasoned decision of the Enlarged Board of Appeal G1/15 (partial priority/poisonous divisionals) was published in February, and is available here.

This note elaborates on the brief report which we published here when the Order was published in November 2016.

It is clear from the reasons given by the Enlarged Board that the “poisonous priority/poisonous divisional” proposition is now dead.

The Enlarged Board has explicitly held that partial priority is available in all circumstances, so that no mis-match of effective dates can arise between a claim and the examples which it covers, which was the foundation of the “poisonous priority/poisonous divisional” proposition.

“If a claim in the later application is broader than an element disclosed in the priority document, then priority may be claimed for such element but not for all other elements encompassed by the claim or claims. This principle applies for each individual element disclosed in any priority document. It does not matter whether partial priority is claimed for one element in one priority document only, for a plurality of elements disclosed in one priority document…, for a plurality of elements disclosed in more than one priority document… or for a plurality of elements disclosed in a plurality of priority documents… It is also of no relevance whether one claim … encompasses only one element disclosed in a priority document or a plurality of elements disclosed in one or more priority documents…” (G1/15, Reasons, 5.1.3).

The argument, mentioned in our previous report, that there may be a “special relationship” which would prevent members of a parent/divisional family from being cited against each other, was not developed by the Enlarged Board, in view of the above conclusion on priority.

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