The Right Of Priorities: Recent Developments In EPO Case Law

Recent decisions passed by three different instances of the EPO have significant effects on the patentability of inventions under European patent law. All of them concerned the validity of patents to be assessed in opposition proceedings. Applicants should be aware of the consequences of these decisions. Avoidable mistakes when filing a European patent application and even previously may later result in the loss of the patent.

1. EPO, Enlarged Board of Appeal, decision of November 29, 2016, Case G 1/15, OJ EPO 2017, A82 – Infineum USA L.P. v Clariant Produkte (Deutschland) GmbH

Prior to decision G 1/15 of the Enlarged Board of Appeal (EBA), divergent case law created considerable legal uncertainty in respect to the application of Art. 88 (2), 2^nd sentence, EPC on partial priorities. One line of case law interpreted the previous decision G 2/98 of the EBA to mean that partial priority can only be claimed if the relevant claim comprises alternative embodiments,