G 1/15 (2) - The decision on partial priority
The Order was already issued by the Enlarged Board in November last year, but the full decision and its reasoning became available only just now. The Enlarged Board considered the EPC priority provisions of Art. 87(1), 88(2)-(3) and 89, Paris Convention Priority and the FICPI Memorandum in detail to come to its decision. The right to claim priority and its effect/ purpose (reason 4) led the Enlarged Board to conclude that a generic claim encompassing alternative subject matter may not be refused partial priority, provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect.
Summary of Facts and Submissions
I. By interlocutory
decision T 557/13 dated 17 July 2015, Technical Board 3.3.06 referred the following
questions of law to the Enlarged Board of Appeal (further: Enlarged Board) under
Article 112(1)(a) EPC:
"1. Where
a claim of a European patent application or patent encompasses alternative subject-matters
by virtue of one or more generic expressions or otherwise (generic “OR”-claim), may entitlement to partial priority
be refused under the EPC for that claim in respect of alternative subject—matter
disclosed (in an enabling manner) for the first time, directly, or at least implicitly,
and unambiguously, in the priority document?
2. If the answer
is yes, subject to certain conditions, is the proviso "provided that it gives
rise to the claiming of a limited number of clearly defined alternative subject-matters"
in point 6.7 of G 2/98 to be taken as the legal test for assessing entitlement to
partial priority for a generic “OR”-claim?
3. If the answer
to question 2 is yes, how are the criteria "limited number" and "clearly
defined alternative subject-matters" to be interpreted and applied?
4. If the answer
to question 2 is no, how is entitlement to partial priority to be assessed for a
generic “OR”-claim?
5. If an affirmative
answer is given to question 1, may subject—matter disclosed in a parent or divisional
application of a European patent application be cited as state of the art under
Article 54(3) EPC against subject—matter disclosed in the priority document and
encompassed as an alternative in a generic "OR"-claim of the said European
patent application or of the patent granted thereon?"
II. In the case
underlying the referral, the opposition division revoked European patent No. 0 921
183, which was granted on a divisional application of European patent application
No. 95923299.2 (hereinafter "parent application"). The latter was filed
on 8 June 1995 and published
on 14 December 1995. The patent and the parent application claim priority from national
application GB 9411614.2 (hereinafter ”D16"), filed on 9 June 1994.
Claims 1 and
7 of the patent read as follows:
"1. The
use of a cold flow improver, wherein the cold flow improver is an oil—soluble polar
nitrogen compound carrying two or more substituents of the formula -NR(13)R(14),
where R(13) and R(14) each represent a hydrocarbyl group containing 8 to 40 carbon
atoms provided that R(13) and R(14) may be the same or different, one or more of
which substituents may be in the form of a cation derived therefrom, to enhance
the lubricity of a fuel oil composition having a Sulphur content of at most 0.05%
by weight, wherein from 0.001 to 1% by weight of the cold flow improver based on
the weight of the fuel is present."
"7. The
use of any of claims 1 to 4, wherein the polar nitrogen compound is the N,N-dialkylammonium
salt of 2—N',N'—dialkylamidobenzoate product of reacting one mole of phthalic anhydride
and two moles of di(hydrogenated tallow)amine."
The patent was
opposed on the grounds of Articles 100(a) EPC (lack of novelty and lack of inventive
step and 100(c) EPC (non-compliance with the requirements of Articles 123(2) and
76(1) EPC).
The reasoning
of the decision under appeal is in essence the following:
— The claims
as granted were not objectionable under Article 123(2) or 76(1) EPC.
— The subject—matter
of claim 1, resulting in a generalisation of a more specific disclosure of the nature
of the compound to be used as a cold flow improver in the priority document, did
not represent the same invention. The priority claimed was thus not valid for the
whole scope of claim 1. Moreover, referring to G 2/98 (OJ EPO 2001, 413, Reasons,
points 4, 6.6 and 6.7), the opposition division concluded that the "intermediate
generalisation in granted claim 1 with respect to the disclosure of priority document
D16 does not give rise to the claiming of a limited number of clearly defined alternative
subject-matters" and thus that the "subject—matter of claim 1 was only
entitled to the filing date".
— Although the
patent met the requirements of Article 76(1) EPC, it did not enjoy the priority
date of the parent application, which thus was state of the art under Article 54(3)
EPC.
— Consequently,
the subject—matter of claim 1 as granted lacked novelty under Article 54(3) EPC
in view of the use of the cold flow improver of Example 1, disclosed identically
in the parent application and in the priority document. The embodiment described
in the parent application was held to be "entitled to the claimed priority
date of 09.06.1994", whereas granted claim 1 was held to be "only entitled
to the filing date of 08.06.1995".
III. Following
a decision taken on 14 October 2015, the Enlarged Board invited the President of
the European Patent Office to comment on the points of law referred to it by the
technical board and placed an announcement in the Official Journal of the European
Patent Office to give third parties the opportunity to express their views on the
points referred.
IV. The President
of the European Patent Office submitted his comments by letter dated 25 February
2016. A large number of amicus curiae briefs were also received.
V. Oral proceedings
took place on 7 June 2016. At the end of the oral proceedings the Chairman announced
that the Enlarged Board would give its decision in writing before the end of November
2016.
VI. Submissions
of the appellant
- As to question
1 of the referral
The term generic
"OR"-claim can be interpreted in at least two ways: firstly, as relating
to a claim broadened beyond the broadest disclosure of the priority document, and,
secondly, as relating to a claim which is narrower in scope than the priority disclosure
but which contains a generic term. The appellant requests the Enlarged Board to
clarify in its decision the interpretation which it adopts.
Concerning the
legal context of the present issue, the EPC is a special agreement within the meaning
of the Paris Convention (J 15/80, OJ EPO 1981, 213). Thus, interpretations of the
EPC which are incompatible with the Paris Convention should not be considered the
intention of the legislator.
The referred
question focuses on certain aspects of the EPC. However, the EPC must be interpreted
as a coherent whole: interpretations of one part that contradict or adversely affect
other parts cannot be what the legislator intended.
Under the Vienna
Convention on the Law of Treaties, the travaux préparatoires are the primary source
of reference for resolving the meaning of the EPC. Primary law dominates secondary
law (case law). In the case of conflict, the legislative intent, as evidenced by
the travaux préparatoires, should prevail.
Both the political
context and the industrial context of the patent system require it to be simple
and affordable, and to support the priority right with high legal certainty. The
law needs to reflect the realities of research, and not create artificial barriers
to priority entitlement or the management and transfer of patent rights.
The issue of
poisonous priority and self—collision looks out of place in this context; its complexity
brings more cost and legal uncertainty, and creates a further barrier to patent
protection. It has no counterpart in the rest of the priority world, which has applied
the Paris Convention without creating this difficulty.
With respect
to inter partes proceedings under the EPC, adopting a narrow, literal approach to
the proviso of G 2/98 (supra, Reasons, point 6.7) "provided that it gives rise
to the claiming of a limited number of clearly defined alternative subject-matters"
comes close to establishing lack of clarity as a substantive ground against granted
claims: a lack of clarity per se would be sufficient to fail the literal test of
point 6.7, depriving the claim of priority and precipitating self—collision.
The appellant
submits that the answer to question 1 should be negative, arguing that the divergence
in the case law stems from a strict interpretation of point 6.7 of G 2/98 as the
definitive statement setting out the law on partial priority. However, legislation
takes precedence over case law, and neither the EPC nor the Paris Convention provides
for a restrictive approach whereby partial (or multiple) priority should be denied
on the ground that a claim was not drafted so as to relate to a limited number of
clearly defined alternatives . FICPI Memorandum C (hereinafter "the
Memorandum", cf. "travaux préparatoires" to the EPC 1973 M/48/I,
section C) provides a clear view of the intended approach to partial (or multiple)
priority: generic "OR"-claims are a permissible way to refer to alternatives
in a claim. The Memorandum provides concrete examples a), b) and c) showing how
priority has to be assessed. No distinction is made between the different types
of generic expressions and no need is expressed to separate out subject—matter into
different priority bundles.
It is thus considered
that the correct approach is that adopted in decisions T 1222/11 (of 4 December
2012, not published in the OJ EPO) and T 571/10 (of 3 June 2014,not published in
the OJ EPO) and which, by dividing the generic "OR"-claim into conceptual
parts inside and outside the scope of each priority disclosure, resolves
the problem
of poisonous priority and self-collision (as discussed in the commentaries Schulte/Moufang,
Patentgesetz mit EPU, 9th edition 2014,§41,Rdnr 44 and Bremi in Singer/Stauder,
EPU, 7th edition 2016, Art.87, Rdnrn 34,35). This approach amounts to re—instating
the case law which prevailed before G 2/98.
An unequivocal
"no" in answer to question 1 makes it unnecessary to answer questions
2 to 4.
— As to question
5 of the referral
A negative answer
to question 1 has the consequence that question 5 too has to be answered in the
negative.
Adopting the
"encompasses" test for partial priority means that the scope of the European
claim will have partial priority to the extent that it encompasses priority content.
So a conceptual part of the claim will always have the same effective date as the
same content in a parent or divisional application, and one can never become prior
art to the other under Article 54(3) EPC.
The appellant
expressed the view that the Enlarged Board should nevertheless provide an interpretation
of Articles 54(3) and 76(1) EPC in this respect, particularly in order to make it
clear that, contrary to what has been argued by the respondent, the assessment of
priority entitlement for a parent and for a divisional application is not to be
performed independently, because the divisional enjoys any right of priority of
its parent, provided only that the divisional does not extend beyond the content
of the earlier application as filed.
VII. Arguments
of the respondent
The respondent
requested a positive answer to questions 1, 2 and 5, essentially for the following
reasons.
The disclosure
test as set out in G 2/98 for acknowledging partial priority does not allow a simple
conceptual division of a generic "OR"-claim into two or more parts, because
this standard requires the application documents to disclose directly and unambiguously
what the subject—matter of the claimed priority or priorities is. This is the way
the disclosure test is understood for the purposes of Article 123(2) EPC. G 2/98
stated that the same standard should apply for the assessment of priority under
Article 87(1) EPC in order to define how the notion of the "same invention"
should be interpreted. This was later confirmed in G 1/03 (OJ EPO 2004, 413, 276,
Reasons, point 2.2.2) and G 2/10 (OJ EPO 2012, Reasons, point 4.6).
The acknowledgement
of partial priorities on the basis of subsumptions as in the conceptual approach
would lead to contradictions because different standards would be used for novelty,
added subject—matter and priority, in particular when two European applications
conflicted with one another under Article 54(3) EPC.
Moreover, a
negative answer to question 1 would lead to systematically acknowledging priority
rights without any individual examination. However, G 2/10 (supra, Reasons, point
4.5.3) made it clear that potential embodiments or intermediate generalisations,
although falling within the ambit of the general teaching, cannot be seen as implicitly
disclosed on the sole basis of schematic reasoning.
The proviso
laid down in G 2/98 (supra, Reasons, point 6.7) must be seen as an expression of
the requirement for a direct and unambiguous disclosure in the priority document
of the subject—matter of the claim of the subsequent application. This proviso means
that in order for a partial priority to be acknowledged only a limited number of
clearly defined alternative embodiments can be distinguished by a skilled person
within the ambit of the generic feature. This is the case in example a) of the Memorandum
because of the limited number of existing halogens, namely F, Cl, Br, I and At,
so that nothing prohibits the acknowledgement of partial priority for C1. By contrast,
examples b) and c) of the Memorandum do not clearly define what all the possible
alternatives included in the generic feature are, so that the required direct and
unambiguous disclosure is missing.
The Memorandum
does not have the force of law. It expresses the view prevailing in 1973, and the
only conclusion that may be drawn from it today is that the legislator wished to
create the possibility of claiming partial priority. However, the scope of this
possibility has become limited due to developments in the case law in the meantime.
Article 4F of
the Paris Convention entitles an applicant to claim priority for a patent claim
of a subsequent application even if it contains additional features or subject—matter
as compared to the priority application and excludes the application to be refused
on that ground. However, it does not give an applicant the possibility to claim
priority for a patent claim of a subsequent application whose subject—matter was
not disclosed in the priority application. Hence, Article 88(3) EPC is consistent
with Article 4F of the Paris Convention.
A negative answer
to question 1, as many amicus curiae briefs advocate, would mean that partial priority
should be acknowledged without any conditions or test. Moreover, there was no explanation
why the priority right should be derived from the scope of protection of the priority
document, when the EPC and the case law provide that the disclosure of the priority
document is the determining factor.
Consequently,
the respondent took the view that the answer to question 2 should also be positive
and, with regard to question 3, that the proviso of a "limited number of clearly
defined alternative subject matters" has to be interpreted to mean that partial
priority should not be acknowledged if it places an undue burden on the skilled
person to be able to distinguish the possible alternatives within a generic "OR"-claim,
or if more than one generic feature is encompassed in the claim, or if the generic
feature is represented by ranges of values or domains of use.
On question
5, the respondent argued in substance that a consistent body of case law has developed
which considers that, once a divisional application has been validly filed, it becomes
separate from and independent of the parent application. Parent and divisional thus
have no particular relationship to each other which could justify not applying Article
54(3) EPC. In this respect, some amicus curiae briefs expressed the view that in
the case of a parent and a divisional application with the same disclosure and having
the same priority right, no collision could ever occur. The respondent emphasised
that such collision is not ruled out and results from amendments made during the
priority interval, with the consequence that some parts of the description enjoy
the priority date while other parts only enjoy the filing date. In other words,
such collision can only occur as a consequence of an invalid priority claim. However,
this situation is solely the responsibility of the applicant who made the amendments
leading to it, even though other options were open to him.
VIII. Comments
of the President of the European Patent Office
Focusing on
the historical background to Article 88(2) and (3) EPC, the President of the European
Patent Office concluded that these provisions are based on Article 4F of the Paris
Convention and that partial priority is a variant of multiple priorities for which
no additional requirements apply. The Paris Convention does not cover the situation
of multiple priorities for a single claim. However, the Memorandum suggests that
entitlement to priority for generic “OR”-claims
should be facilitated as much as possible. In particular, no requirement to spell
out alternative subject-matters as such in a claim can be derived from the travaux
préparatoires. A thorough analysis of board of appeal decisions concerning the way
in which priority rights are to be assessed, in particular where partial priority
is claimed for a generic "OR"-claim, showed a persistent divergence in
the case law, although the Enlarged Board has repeatedly stated that the fundamental
test for determining whether subject—matter enjoys priority is the "gold standard"
disclosure test. Hence, the same test applies consistently to Articles 54, 76(1),
87 to 89 and 123(2) EPC.
With regard
to the impact of the present referral, the President of the Office stressed that
the priority right is a core element of the European patent system and that legal
certainty is of paramount importance for all stakeholders in all fields of technology,
but especially so in chemistry and pharmaceuticals, where the definition of (bio—)chemical
subject—matter poses particular difficulties (Markush—type claims or continuous
ranges of numerical values). The need to clarify whether the examples of the Memorandum
continue to be authoritative for the interpretation of Article 88(2), second sentence,
and (3) EPC and what the exact meaning and application are of the phrase "a
limited number of clearly defined alternative subject-matters" in G 2/98 is
especially great in these fields.
A further aspect
is the burden of substantiation in identifying alternative subject-matters within
a generic "OR"-claim, which seems to lie with the applicant, who is claiming
the benefit of the right of priority. Having considered decisions issued by courts
of EPC contracting states, the President of the Office observed that the case law
is still evolving with regard to the requirements for ascertaining "the same
subject—matter" under the provisions of Articles 87 to 89 EPC, with some courts
adopting a broad approach and others appearing to be sceptical of a generic "OR"-claim's
entitlement to partial priority for alternatives not spelt out as such in the claim.
Moreover, some
courts favour the application of the same disclosure standard for the assessment
of novelty, added subject-matter and priority, whereas others seem to apply the
test for novelty and added subject-matter only to a limited extent to priority.
The same divergence appears in the literature.
The President
of the Office concludes that acknowledging a generic "OR"-claim to be
capable of enjoying partial priority for subject—matter that it encompasses "either
in the form of a generic term or formula, or otherwise" does not appear to
be compatible with the requirement to spell out alternative subject-matters, and
that therefore the strict approach adopted by some boards of appeal seems to be
at odds with the Enlarged Board's jurisprudence. At the same time, the broader approach
may be too abstract in the light of the requirement of "the claiming of a limited
number of clearly defined alternatives" and thus the burden on the public to
identify a large number of alternatives should be taken into account.
With respect
to question 5, the President's view was that it should be answered in the negative.
To do otherwise would go against the purpose and function of divisional applications
in the patent system.
IX. Arguments
in the amicus curiae briefs in favour of a positive answer to question 1
The main arguments
put forward in the amicus curiae briefs in favour of a positive answer to question
1 are the following:
— Partial priority
is a concept not mentioned expressly in either the Paris Convention or the EPC.
Therefore the notion of "the same invention" has to be interpreted narrowly,
taking into account the proviso of unity of invention laid down in Article 4F of
the Paris Convention and the strict approach adopted in G 2/98 (supra, Reasons,
point 6.7).
- With regard
to the "conceptual" approach taken in decision T 1222/11, giving up a
"literal" reading of the proviso of "claiming a limited number of
clearly defined alternative subject-matters", which is understood to mean claiming
such subject-matters in express terms, would lead to legal uncertainty for the users
of the European patent system. In the case law of the Enlarged Board it has been
emphasised that the basic idea of Article 123(2) EPC is that an applicant cannot
be allowed to improve its position by adding subject-matter not disclosed in the
application as filed (G 1/03; G 3/89, OJ EPO 1993, 117). In the same way, G 2/98
explained that a narrow or strict interpretation of the concept of the "same
invention" is necessary to ensure a proper use of priority rights in full conformity
inter alia with the principles of equal treatment of the applicant and third parties,
legal certainty and consistency in the assessment of novelty and inventive step
(Reasons, point 9). These principles of equal treatment and legal certainty thus
also apply to Articles 87 and 88 EPC, so that in assessing partial priority it has
to be investigated whether no unwarranted advantage is given to the applicant or
patentee that could diminish certainty for third parties. This aspect was not given
sufficient attention in decision T 1222/11. If the claims of the subsequent application
are directed to broadened ranges of components A, B and C as compared to the priority
document, without containing a description of the composition disclosed in the previous
application, the public cannot be aware that this specific composition is a crucial
embodiment according to the invention described in the subsequent application claiming
priority. In the same way, the applicant could also claim priority for a different
selection of components A and B, where the priority document disclosed A, B and
D, the last component D being omitted. The conceptual approach could lead to allowing
an arbitrary division of the claimed subject—matter that did not need to have a
basis in the application as originally filed. The finding of the case law that a
priority application is not a reservoir for amending the claims would be disregarded,
as would the principles laid down with respect to selection inventions.
- If acknowledgement
of partial or multiple priorities is seen as a remedy against "self-collision"
between a priority document claiming a species and a subsequent application claiming
a genus, in such circumstances the priority should be recognised only in combination
with measures designed to avoid double patenting and allow for proper delimitation,
within the generic claim of the subsequent application, of the subject-matters disclosed
in the respective priority documents in order to be able to distinguish between
different embodiments claiming different priority dates.
It was suggested
that, in order to avoid double (or multiple) patenting, a disclaimer should be introduced
into the claims of the subsequent application excluding the species disclosed in
the priority document, on the basis of either G 1/03 or G 2/10, depending on whether
or not the subsequent application disclosed the specific subject—matter filed earlier.
In cases in
which partial priority was to be acknowledged it was suggested that
— the self—collision
problem would be solved by excluding the more specific subject—matter from the state
of the art pursuant to Article 54(3) EPC
— the subject—matter
of the priority document should be disclosed in the subsequent application.
X. Arguments
in the amicus curiae briefs in favour of a negative answer to question 1
Most amicus
curiae letters argued in favour of a negative answer to question 1. Given the outcome
of the referral, it does not appear necessary to set out the arguments developed
in these briefs.
Reasons for
the Decision
1. Admissibility
of the referral
The jurisprudence
of the boards of appeal clearly takes two different lines on a point of law of fundamental
importance, namely the issue of partial priority.
The requirements
laid down in Article l12(1)(a) EPC are thus complied with, in that a decision of
the Enlarged Board is necessary to ensure a uniform application of the EPC. This
is common ground between the parties.
2. Context of
the referral
2.1 A new line
denying partial priority has emerged on the basis of the Enlarged Board's statement
in G 2/98, supra, Reasons, point 6.7, which reads as follows:
"As regards
the "OR"-claim (...) it is held in the memorandum that where a first priority
document discloses a feature A, and a second priority document discloses a feature
B for use as an alternative to feature A, then a claim directed to A or B can enjoy
the first priority for part A of the claim and the second priority for part B of
the claim. It is further suggested that these two priorities may also be claimed
for a claim directed to C, if the feature C, either in the form of a generic term
or formula, or otherwise, encompasses feature A as well as feature B. The use of
a generic term or formula in a claim for which multiple priorities are claimed in
accordance with Article 88(2) EPC, second sentence, is perfectly acceptable under
Articles 87(1) and 88(3) EPC, provided that
it gives rise to the claiming of a limited number of clearly defined alternative
subject matters" (our emphasis).
2.2 In a number
of decisions of the boards of appeal, the last part of the third sentence, quoted
above in bold, has been taken as a ground for refusing partial priority for a generic
"OR"-claim. It is convenient to reproduce here the summaries of these
decisions which were set out in the Reasons for
decision T 557/13 of the referring
board.
Broadening of
generic chemical formulae
In case T 1127/O0,
claim 1 was directed to a generic formula covering a great number of alternative
compounds. The board noted that the alternative compounds were not, as such, spelt
out in the claim, and held that the fact that they might be intellectually envisaged
to fall within the scope of the claim did not make up for a clear and unambiguous
presence of these alternatives, individualised as such, in the claim. Claim 1 did
not embrace a limited number of clearly defined alternative subject-matters in the
form of an "OR"-claim, which could be split up into groups of different
priorities. Thus, claim 1 could not enjoy partial priority from a priority document,
but could only be entitled to the priority date of the document where the generic
formula was disclosed for the first time. This was not the first priority document,
as it disclosed only more specific synthetic ribozymes. Although these were covered
by the general formula of claim 1, there was no direct and unambiguous disclosure
in the priority document of the broad generic group as represented by that formula.
Thus, claim 1 did not enjoy the first priority date (Reasons, points 5 to 7).
In case T 2311/09
(Reasons, points 2 to 4), claim 1 was directed to eotaxin proteins comprising an
amino acid sequence having "at least 40% identity" with a given sequence
and encompassing variants which were not disclosed in either priority document.
Hence, priority was not acknowledged for the whole claim. Nor was partial priority
acknowledged to the extent that the claim encompassed proteins having 100% sequence
identity, although this sequence appeared to be disclosed in a priority document.
In this respect, the board held that claim 1 did "not comprise a limited number
of clearly defined alternative subject-matters (cf. G 2/98, Reasons, point 6.7)".
Broadening of
chemical compositions
In case T 184/06,
(Reasons, point 6), partial priority was not acknowledged although the claim encompassed
compositions disclosed in the priority document in narrower terms (narrower alkoxylation
range of a component; additional component). The board found that the combination
of features of claim 1 could not be derived directly and unambiguously from the
priority document (Article 87(1)EPC and G 2/98, Headnote and Reasons, point 9).
Moreover, claim 1 related to a composition of matter characterised by a combination
of features which could not be regarded in isolation from each other. This subject—matter
encompassed "everything falling within its scope defined by its essential features"
and did "not relate to specific distinct alternatives having different scope
for which different priorities could be claimed" (Article 88(2) and (3) EPC).
In case T 1443/05,
claim 1 was directed to a composition comprising two components, the presence of
a specific third component considered disadvantageous being excluded by a disclaimer.
Priority was claimed from an earlier European application which exemplified compositions
comprising the first two components and not comprising the third, but which also
mentioned the possibility of incorporating the third. The board concluded that the
subject—matter of claim 1 did not concern the same invention (Article 87(1) EPC)
as that disclosed in the priority document. Hence, the claimed priority date was
denied for the claim as a whole (Reasons, point 4.1.11). Moreover, with reference
to G 2/98 (Reasons, point 6.7), it was held that, although the examples of the priority
document were encompassed by claim 1, the claim's generic wording did not permit
any unambiguous alternative covering the examples to be identified (Reasons, point
4.2.6). The compositions exemplified in the European application whose priority
was claimed, which did not contain the third component, were thus held to be novelty
destroying under Article 54(3) EPC.
Broadening of
ranges of values
In case T 1877/08,
claim 1 was directed to a blend of three components present, respectively, in the
relative amounts of 30 to 65 / 1 to 10 / 33 to 69 weight—%. The patent claimed priority
from a US application disclosing a blend containing the same three components in
more narrowly defined amounts, namely 30 to 55 / 2 to 10 / 35 to 65 weight—%, respectively (emphasis by the
referring board). The board found that the combination of features of claim 1 could
not be derived directly and unambiguously from the priority document (Article 87(1)
EPC and G 2/98). The claimed amounts represented a continuum of a numerical range
of values which did not correspond to distinctive alternative embodiments (Article
88(2) and (3) EPC). Consequently, no separable alternative embodiments, i.e. elements
in the sense of Article 88(3) EPC, which could enjoy the priority date could be
identified within that continuum, and for these reasons priority was denied for
claim 1 as a whole.
In case T 476/09,
claim 1 was directed to a toner composition characterised inter alia by an average
"circularity" (a physical characteristic) of the toner particles that
was defined in terms of a continuous range "of 0.930 to 0.990" (emphasis
by the referring board). Although the first priority document disclosed a toner
with all the features of claim 1 at issue, but with a narrower circularity range
"of 0.94 to 0.99", the board did not acknowledge even partial priority.
The board found that the claimed range represented a continuum of a numerical range
of values which did not correspond to distinctive alternative embodiments (G 2/98,
Reasons, point 6.7, and T 1877/08). Thus, no separable alternative embodiments could
be identified within this continuum which could enjoy the priority date.
Other generalisations
In case T 1496/ll,
claim 1 of the (parent) patent was directed to a security document including a security
device which comprised a functionally defined "feature (10) which can be inspected,
enhanced or optically varied by the optical lens when ...". The priority document
disclosed only a "printed or embossed" feature for this purpose. The board
concluded (Reasons, point 2.1) that the claimed subject-matter had been generalised
by omitting the more specific indication and thus encompassed security devices including
features produced by other means. Hence, it did not constitute the same invention
as that set out in the priority document (Article 87(1) EPC). Consequently, the
subject-matter of claim 1 was found to be only entitled to the filing date of the
parent application upon which the patent had been granted. The board went on to
conclude that the subject—matter of claim 1 lacked novelty under Article 54(3) EPC
over an embodiment disclosed in its published European divisional application. This
embodiment was identically disclosed in the priority document and was hence entitled
to the priority date claimed. Therefore, it anticipated the subject-matter of claim
1 of the parent patent, which was not entitled to priority.
2.3 As can be
seen from the above summaries, the broadening of a chemical formula, of a range
of values, of chemical compositions, or the presence of other generalisations compared
to the invention disclosed in an enabling manner in the priority document has led
to partial priority being denied because the claim of the subsequent application
did not spell out a limited number of clearly defined alternatives, even though
the requirement of identity of invention was met for at least some alternative embodiments
disclosed in the priority document and encompassed by the generic "OR"-
claim.
2.4 A number
of decisions issued since G 2/98 which, on the other hand, acknowledged partial
priority in comparable circumstances were also summarised in the referring decision
T 557/13.
In case T 135/01,
claim 1 was directed to a method for driving an electric motor involving first and
second current switching steps, whereby the switching interval was defined as being
in the range 1/4 < b < 3/4. The board found (Reasons, point 5) that "for
purposes of assigning priority, claim 1 ... was to be regarded as being split into
a first notional part claim specifying a range for the switching interval of ‘approximately
= b/2', which was entitled to the priority date of the GB application ... [priority
document], and a second notional part claim to the complementary range of 1/4 <
b < 3/4 punctured by the range of ‘approximately b/2', which second part claim
was entitled only to the priority of the actual filing date and for which therefore
the intermediate publication D13 [conference proceedings] was prior art", since
it also disclosed the range of "approximately = 6/2". The board, without
expressly referring to G 2/98 or addressing the criteria of point 6.7 of the Reasons,
thus acknowledged partial priority for the narrower range disclosed in the priority
document and encompassed, without being spelt out, in the broadened range of claim
1.
In case T 665/00,
claim 10 was directed to a cosmetic powder containing hollow microspheres characterized
inter alia by a "specific mass below 0.1 g/cm3", said range not being
disclosed in the priority document. A novelty objection had been raised based on
an alleged public prior use within the priority interval. Referring to Article 88(3)
EPC and G 2/98 (supra Reasons, point 6.7), the board held that different elements
of a patent application could enjoy different priority dates and this was also applicable
to a single claim encompassing alternatives and being, thus, separable into a plurality
of subject-matters (Reasons, point 3-5). The board further held (Reasons, point
3-5-1) that the generic expression "specific mass below 0.1 g/cm3" permitted
defining a set of hollow microspheres, i.e. alternative possibilities of realising
the invention, to which a priority date could, respectively, be attributed. The
priority document exemplified powders comprising hollow microspheres "Expancel
DE" having a specific mass value falling within the range defined in the claims.
Among the alternatives encompassed by claim 10, those involving the powders comprising
the microspheres "Expancel DE" thus enjoyed the priority date claimed.
The invoked prior use, which involved a powder containing the same "Expancel
DE" microspheres, could therefore not be novelty—destroying. In this decision,
partial priority was thus acknowledged for a generic "OR"-claim comprising
as a generic expression a specific mass range which was not disclosed as such in
the priority document and which represented a generalisation of the more specific
disclosure in the examples of the priority document, more particularly of the implicitly
disclosed specific mass value of the "Expancel DE" microspheres used.
The finding that the claim was entitled to partial priority to the extent that the
claim encompassed specific alternatives disclosed in the priority document was based
on a mere comparison of the ambit of the claim with the content of the priority
document. The decision contains no further specific comments in respect of the criteria
"limited number" and "clearly defined" of G 2/98 (supra, Reasons,
point 6.7).
In Case T 1222/11
(Reasons, point 11), the board advocated, in an obiter dictum, the following interpretation
of the proviso in G 2/98, Reasons, point 6.7:
— This condition
set out in G 2/98 could not be meant, as held in the cited decisions, to require
that the subject-matter had to be defined in an "OR"-claim in a certain
manner, such as to give "rise to the claiming of a limited number of clearly
defined alternative subject-matters", as this would, at least in relation to
generic terms, be at variance with the disclosure test based on the principle of
an unambiguous and direct disclosure (G 3/89).
This conclusion
was reached in view of the following:
— Point 6.7
of the Reasons concerned exclusively the question of claiming multiple priorities
for one and the same "OR"-claim. The reference to Article 88(3) EPC thus
meant that the Enlarged Board was indicating under what conditions the assessment
required by "OR"-claim was Article 88(3) EPC could be made when the drafted
using a generic term or formula.
— This assessment
could be achieved only by a comparison of the claimed subject—matter of the "OR"-
claim with the disclosure of the multiple priority documents.
— Therefore,
in the context of this assessment, the wording "gives rise to the claiming
of a limited number of clearly defined alternative subject-matters" referred
to the ability to conceptually identify, by this comparison, such alternative subject-matters,
to which the multiple rights of priority claimed could be attributed or not. This
was necessary in order to make it possible to identify which parts of the claim
benefited from the effect of the priority right defined in Article 89 EPC.
Moreover,the
last sentence of point 6.7 of the Reasons for G 2/98 which complied with the Memorandum,
according to the Enlarged Board reflected the intent of the legislator concerning
multiple priorities. Going through the examples illustrated in the Memorandum, the
board indicated how the respective priorities could be acknowledged in each case,
in compliance with G 2/98 (Reasons, 6.7). In particular, example c) of the Memorandum
illustrated that attributing different priority dates was "not reserved only
to claims which define on their own a limited number of clearly defined subject-matters"
(Reasons, point 11.5.7). Furthermore, there was no reason why the condition of G
2/98 should be different when assessing entitlement to partial priority in relation
to a single priority document (Reasons, point 11.6).
It was therefore
concluded that the decision on whether priority could be acknowledged for subject—matter
disclosed in the priority document and encompassed by an "OR"-claim did
not depend on whether this subject-matter was expressly identified as a separate
alternative in the claim.
Case T 571/10
expressly applied the approach developed in T 1222/11. Two alternative groups of
subject-matters were identified (Reasons, point 4.5.14) as being encompassed by
the claim, although not spelt out as such therein: alternative (a), concerning the
use of a specific composition (calcium salt of the active ingredient and tribasic
phosphate salt in which the cation was multivalent), and alternative (b), concerning
the use of a composition defined in more generic terms (acid form or acceptable
salt thereof as the active, inorganic salt in which the cation was multivalent,
wherein active ingredient and inorganic salt were other than calcium salt of the
acid and tribasic phosphate salt in combination).
Alternative
(a) was subject—matter disclosed in the priority document, not defined as such in
the claim but encompassed by it. Alternative (b) was the remaining subject-matter
of the claim, which was not disclosed in the priority document. The board found
that the subject-matter of alternative (a) enjoyed priority whereas that of alternative
(b) did not. Consequently, parallel European application D9, claiming priority from
the same earlier application as the patent in suit and disclosing the same two alternatives
(a) and (b), was found not to be state of the art under Article 54(3) EPC for alternative
(a),
because it did
not have an
earlier effective date. For alternative (b) D9 was prior art pursuant to Article
54(3) EPC, but not novelty—destroying, since alternatives (a) and (b) did not overlap.
3. Scope of the referral
It is clear from the referring
decision that the divergence that has emerged in the case law has been caused by
the proviso in point 6.7 of the Reasons of G 2/98. In particular, in a number of
decisions the words "provided that it gives rise to the claiming of a limited
number of clearly defined alternative subject-matters" have been understood
as a further test to be complied with for a claim to partial priority to be accepted.
The Enlarged Board will analyse the relevant provisions of the EPC and corresponding
provisions of the Paris Convention in order to assess whether the introduction of
additional conditions and/or limitations is in line with the fundamental principles
governing the right of priority. Accordingly, the Enlarged Board will consider first
the nature, conditions and effects of the right of priority in general (see point
4 below) and then issues relating specifically to partial and multiple priorities
(see point 5 below). Lastly, it will discuss whether additional conditions of a
substantive kind apply and how the right of priority is to be assessed (point 6).
4. Legal framework of the priority right
4.1 Priority
is a right
Article 87(1)
EPC states:
"Any person
who has duly filed, in or for
(a) any State
party to the Paris Convention for the Protection of the Industrial Property or
(b) any Member of the World Trade Organization, an application for a patent ...
(b) any Member of the World Trade Organization, an application for a patent ...
shall enjoy, for the purpose of filing a European patent application
in respect of the same invention, a right
of priority during a period of twelve months from the date of filing of the
first application."
This wording
corresponds to Article 4 of the ParisConvention, which states in its paragraph A(1):
"Any person
who has duly filed an application for a patent in one of the countries of the Union
..., shall enjoy, for the purpose of
the filing in the countries, a right of priority
during the periods hereinafter fixed."
4.2 Substantive
condition of "the same invention"
Apart from formal
requirements (such as filing of a declaration, identity of applicant, twelve-month
period), the sole substantive condition laid down by the EPC (and the Paris Convention)
for the right of priority to be validly claimed is that the priority document and
the subsequent filing are directed to the same invention, Article 87(1) EPC. Article
4C(4) of the Paris Convention mentions "the same subject". However, the
meaning is undoubtedly identical.
As a matter
of principle, where a right is established by an international treaty or convention,
or by national law, it cannot be restricted by imposing supplementary conditions
in administrative rules or guidelines or even in jurisprudence.
4.3 Effects
of the priority right
4.3.1 Article
89 EPC provides: "The right of priority shall have the effect that the date
of priority shall count as the date of filing of the European patent application
for the purposes of Article 54, paragraphs 2 and 3, and Article 60, paragraph 2."
4.3.2 This provision
makes it clear that the right of priority is intended to protect the applicant against
third parties filing a patent application in respect of the same invention during
the twelve—month period after the first filing. It has to be read in conjunction
with Article 60(1) and (2) EPC, which define entitlement to the grant of a European
patent: this right belongs to the inventor and, in the case of conflict, to the
person who filed first.
4.3.3 Provided
that the application claims the same invention as that disclosed in the priority
document, the subject—matter which enjoys the priority right cannot be considered
state of the art under Article 54(2) or (3) EPC against that application. The relevant
provisions (Articles 89 and 54 EPC) are thus consistent with one another. The fiction
that the subsequent application is deemed to have been filed on the date of the
first filing - to the extent that it relates to the same subject—matter as the first
filing — provides a sort of barrier designed to prevent third parties from interfering
with the applicant's right to obtain protection for the claimed subject—matter which
it first disclosed in the previous application. As a consequence, what is true for
third parties is equally true for the applicant itself.
4.3.4 Consequently,
the only circumstance in which a novelty objection can succeed is where priority
cannot be recognised.
In G 3/93 (OJ
EPO 1995, 18), the Enlarged Board already stated that: “Article 89 EPC deals with
the effect of possessing a right to priority on the premise that the conditions
precedent to having that right have been satisfied, including the requirement that
the inventions be the same... Where priority is claimed but cannot be allowed because
the essential condition precedent, that the inventions are the same, is not met,
there is no right to priority. In consequence, any publication of the contents of
the priority document in the interval between the filing thereof as a patent application,
and the filing of the European patent application claiming priority therefrom, constitutes
prior art citable against elements of the European patent application which are
not entitled to priority" (Reasons, points 8 and 9).
4.3.5 Article
4B of the Paris Convention establishes the effects of the right of priority as follows:
"Consequently,
any subsequent filing shall not be invalidated by reason of any acts accomplished
in the interval, in particular, another filing, the publication or exploitation
of the invention, and such acts cannot give rise to any third-party right or any
right of personal possession….”
In his Guide
to the Application of the Paris Convention (edition 1967), pages 41 and 42, Bodenhausen
commented in connection with this provision that "the effect of the subsequent
filing must not be less than it would have been had that filing been effected at
the time of the first filing on which the right of priority is based", and
further explained that neither another filing nor a publication or exploitation
of the invention, "whether by the person who filed the first application or
by third parties during the period of the priority right [will] invalidate or prejudice
the subsequent filing for which the right of priority is claimed; particularly,
it will neither destroy the novelty of the invention nor diminish the inventive
step embodied in it, as considered at the date of the first application on
which the right of priority is based."
The same understanding
was expressed by Mathély as follows in "Le Nouveau Droit Francais des Brevets
d'Invention", 1992, at pages 596 and 597, in the chapter dedicated to Union
law: "La priorité accorde au brevet correspondant une immunité contre les faits
de divulgation et d'usurpation qui peuvent s'étre produits depuis la premiere demande
prioritaire". Furthermore, "la priorité met l'inventeur a l‘abri, non
seulement des antériorités des tiers, mais encore de sa proper divulgation".
These authors
have chosen clear and strong terms to define the ambit of the right of priority.
4.4 It can
thus be concluded both from the wording of the law and from the logic of the underlying
concept that the right of priority as established in the EPC (and the Paris Convention)
operates to exclude the collision of subject— matter disclosed during the priority
period with identical subject-matter disclosed in a priority document, in so far
as priority has been validly claimed.
5. Partial and
multiple priorities
5.1 The EPC
provisions
5.1.1 The relevant
provisions for both partial and multiple priorities are to be found in Article 88(2)
and (3) EPC.
Article 88(2)
first and second sentences, EPC provide: "Multiple priorities may be claimed
in respect of a European patent application, notwithstanding that they originate
in different countries. Where appropriate, multiple priorities may be claimed for
any one claim."
Article 88(3)
EPC lays down: "If one or more priorities are claimed in respect of a European
patent application, the right of priority shall cover only those elements of the
European patent application which are included in the application or applications
whose priority is claimed."
In fact, paragraphs
2 to 4 of Article 88 EPC correspond to Articles 4F and 4H of the Paris Convention,
though with the express provision that multiple priorities may be claimed for any
one claim (Article 88(2), second sentence, EPC).
5.1.2 Article
88(3) EPC is to be interpreted in such a way that the right of priority embraces
situations where only part of the subsequent application (e.g. part of the subject—matter
encompassed by a claim) can enjoy priority from the one or more priority applications.
The elements
which can be directly and unambiguously derived from the one or more priority applications
constitute what may benefit from partial priority, the rest of the elements disclosed
in the subsequent application establishing, by themselves, a priority for a further
subsequent application.
The term "elements"
used in Article 88(3) EPC (see also Articles 4F and 4H of the Paris Convention)
is not to be understood as a single feature but as subject—matter such as that defined
in a claim or disclosed in the form of an embodiment or example specified in the
description (see G 2/98, supra Reasons, points 4 and 6.2).
Article 88(3)
EPC refers to a plurality of elements which may have been "included" (disclosed)
in one or more priority documents. Each of the disclosed "elements" may
benefit from the priority of the priority document in which it has been disclosed.
Under Article 88(3) EPC, it does not matter whether all elements encompassed by
a claim are disclosed in the same priority document or in a plurality of priority
documents, the latter situation being referred to as "multiple priorities"
in Article 88(2), first sentence, EPC.
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 embodiments
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 (first situation addressed in Article 88(3) EPC),
for a plurality of elements disclosed in more than one priority document (second
situation addressed in Article 88(3) EPC) or for a plurality of elements disclosed
in a plurality of priority documents (situation addressed in Article 88(2), second
sentence, EPC). It is also of no relevance whether one claim for which partial priority
is claimed encompasses only one element disclosed in a priority document or a plurality
of elements disclosed in one or more priority documents.
The situation
where one claim encompasses elements disclosed in a plurality of priority documents
is specifically addressed in Article 88(2), second sentence, EPC.
In view of the
wording of Article 88(2) and (3) EPC alone, the argument that partial priority is
a concept not present in the European patent system cannot hold.
5.2 The historical
documentation relating to the EPC, including the Memorandum, which can be said to
express its intent (G 2/98, Reasons, point 6.4), allows for a confirmation of the
present interpretation.
5.2.1 Travaux
préparatoires to the EPC 1973 - FICPI Memorandum C (M/48/I)
With respect
to multiple priorities for one and the same claim, the Memorandum draws an important
distinction between two different types of claim:
— Type A+B claim
("AND"—claim, claim too narrow to be supported by the disclosure of the
first priority document); and
— Type A or
B claim ( “OR”-claim, claim too broad to be supported by the disclosure of the first
priority document).
Concerning "AND-claims",
the Memorandum explains that such a situation occurs when "a first priority
document discloses a feature A and a second priority document discloses a feature
B to be used together with A, then a claim directed to A+B cannot enjoy a partial
priority from the first priority date, because the invention A+B was disclosed only
at the date of the second priority document."
Concerning "OR"-claim
situations, which form the context of the present referral, the Memorandum states
that "if a first priority document discloses a feature A, and a second priority
document discloses a feature B for use as an alternative to A, then a claim of the
application directed to A or B will in fact consist of two distinct parts A and
B respectively, each complete in itself, and there seems to be no reason why it
should not be possible to claim the first priority for part A of the claim and the
second priority for part B of the claim". In this connection, the Memorandum
also points out that "it is of course immaterial whether the actually occurs
in the claim, or is implied word 'or' through the use of a generic term or otherwise".
The Memorandum
includes examples illustrating "OR"-type situations in which it would
be desirable to be able to claim multiple priorities for one and the same claim:
a) broadening
of chemical formulae;
b) broadening
of a numerical range of values (temperature, pressure, concentration, etc.); and
c) broadening
of a field of use.
Such an "OR"-claim
would then enjoy priority
— from the first
priority date to the extent that it encompasses the narrowly defined subject—matter
disclosed in the first priority document, and
— from the second
priority date for the rest of its scope.
As regards partial
priority, the Memorandum points out:
— "the
claiming of partial priority should of course be governed by the same principles
as those explained above for the claiming of multiple priorities", and
— "it would
be appropriate to claim a partial priority in situations corresponding to the "OR"—situation
dealt with under ‘Multiple Priorities‘, the European patent application itself taking
the place of the second priority document".
The Memorandum
also indicates advantages of allowing multiple and partial priorities, including
the avoidance of claim proliferation and possible disadvantages in national post-grant
procedures.
On its last
page, the Memorandum makes it clear that accepting multiple and partial priorities
is not the same as allowing amended claims in such a manner that, after amendment,
only one priority is claimed for each individual claim. The issue of partial priority
would not arise if only one priority was claimed for each individual claim. However,
amending a claim set in such a way that an originally filed claim is split up in
order to address partial priorities may in many situations be unallowable under
Article 123(2) EPC.
5.2.2 The Minutes
of the Munich Diplomatic Conference of 1973, M/PR/I, "Article 86 (88) points
308 to 317, Claiming Priority", indicate that the Memorandum was an essential
element in the process of drafting the EPC provision finally adopted, allowing the
claiming of multiple priorities for one and the same claim.
As a consequence,
the interpretation given in points 5.1.1 to 5.1.3 above is consistent with the Memorandum.
5.2.3 This interpretation
is also confirmed by the Paris Convention.
It is well
established case law that the EPC constitutes, according to its preamble, a special
agreement within the meaning of the Paris Convention.
Articles 87
to 89 EPC, which provide a complete, self-contained code of rules of law on the
subject of claiming priority for the purpose of filing a European patent application
(cf. J 15/80, supra), are thus clearly intended not to contravene the basic principles
concerning priority laid down in the Paris Convention (cf. T 301/87, OJ EPO 1990,
335, Reasons, point 7.5).
Under Article
4F of the Paris Convention, priority may not be refused on the ground that the applicant
claims multiple priorities, or on the ground that an application claiming one or
more priorities contains one or more elements that were not included in the application
or applications whose priority is claimed, provided that, in both cases, there is
unity of invention within the meaning of the law of the country.
With respect
to elements not included in the priority application(s), "the filing of the
subsequent application shall give rise to a right of priority under ordinary conditions"
(Article 4F, second paragraph, Paris Convention).
The second ground
contained in this provision concerns in particular the possibility of partial priority
and was added in 1958 in order to address the frequent situation that the invention
is developed further after the first filing and during the twelve—month period for
claiming priority (cf. Bodenhausen, supra, page 54, point e)).
5.3 It is
thus to be concluded that the EPC does not contain other requirements for recognising
the right of priority beyond the same invention, whether for simple, multiple or
partial priority, the last being regarded as a sub-group of multiple priorities.
As a consequence,
the proviso laid down in G 2/98, (supra, Reasons point 6.7, last sentence), cannot
be construed as implying a further limitation of the right of priority.
6. Assessment
of the same invention
6.1 The basis
for acknowledging priority is to be found in Article 88(4) EPC, which provides:
"If certain elements of the invention for which priority is claimed do not
appear among the claims formulated in the previous application, priority may nonetheless
be granted, provided that the documents of the previous application as a whole specifically
disclose such elements."
Article 4H of
the Paris Convention uses substantially the same wording: "Priority may not
be refused on the ground that certain elements of the invention for which priority
is claimed do not appear among the claims formulated in the application in the country
of origin, provided that the application documents as a whole specifically disclose
such elements."
6.2 In G 2/98,
the Enlarged Board defined at a general level how the concept of "the same
invention" is to be understood. The Enlarged Board's conclusion reads as follows:
"The requirement
for claiming priority of the "same invention", referred to in Article
87(1) EPC, means that priority of a previous application in respect of a claim in
a European patent application in accordance with Article 88 EPC is to be acknowledged
only if the skilled person can derive the subject—matter of the claim directly and
unambiguously, using common general knowledge, from the previous application as
a whole."
The Enlarged
Board thereby adopted a strict approach to the definition of the concept of "the
same invention" in order to
unify the case law in this respect (Reasons, point 5) and to maintain consistency
between the different fundamental elements of patent law by bringing the way in
which priority is assessed into line with the approach used to assess whether the
requirements of Article 123(2) EPC and the requirements for novelty are fulfilled.
The Enlarged
Board's conclusion accords with its later expression of the need for a consistent
approach in G 1/03, where it stated in point 4 of the Reasons that "... the
extent of the right to priority is determined by, and at the same time limited to,
what is disclosed in the priority application. In order to avoid any inconsistencies,
the disclosure as the basis for the right to priority under Article 87(1) EPC and
as the basis for amendments in an application under Article 123(2) EPC has to be
interpreted in the same way." The Enlarged Board took the same approach more
recently in G 2/10 (supra, Reasons, point 4.6). In this way it has consolidated
the case law in order to create a consistent system.
6.3 The statement
of the Enlarged Board in G 2/98 (supra, Reasons, point 6.7) was made in the context
of multiple priorities claimed for one and the same claim. The present referral
concerns the situation of partial priority, the expression "partial priority"
being understood to refer to the situation in which only a part of the subject—matter
encompassed by a generic "OR"-claim is entitled to the priority date of
an earlier application.
6.4 In assessing
whether a subject—matter within a generic "OR" claim may enjoy partial
priority, the first step is to determine the subject—matter disclosed in the priority
document that is relevant, i.e. relevant in respect of prior art disclosed in the
priority interval.
This is to be
done 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 next step 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 but
itself giving rise to a right to priority, as laid down in Article 88(3) EPC.
6.5 This also
corresponds, logically and exactly, to the scheme described in the Memorandum (see
point 5.2 above): "If a first priority document discloses a feature A, and
a second priority document discloses a feature B for use as an alternative to feature
A, then a claim of the application directed to A or B will in fact consist of two
distinct parts A and B respectively, each complete in itself...", and further:
"... it would be appropriate to claim a partial priority in situations corresponding
to the "OR"—situation under "Multiple Priorities", the European
patent application itself taking the place of the second priority document".
6.6 The task
of determining what is the relevant disclosure of the priority document taken as
a whole, and whether that subject—matter is encompassed by the claim in the subsequent
application, is common practice in the EPO and among practitioners of the European
patent system and as such should not pose any additional difficulty.
Nor does it
create uncertainty for third parties, as argued by the respondent and in some amicus
curiae briefs. Although it can be a demanding intellectual exercise, the decisions
reached in cases T 665/00, T 135/01, T 571/10 and T 1222/11 all show that it can
be carried out without any need for additional tests or steps.
6.7 From this
analysis it follows that the assessment of entitlement to partial priority right
does not show that any additional requirements are needed.
7. Conclusion
It follows from
the above that question 1 is to be answered in the negative.
As a consequence,
questions 2, 3, 4 and 5 need not be dealt with.
Order
For these reasons, it is decided that the questions
of law which were referred to the Enlarged Board of Appeal are to be answered as
follows:
Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect.
This decision G 1/15 (pdf) has European Case Law Identifier: ECLI:EP:BA:2016:xxxxxxxxxxxx. The file wrapper can be found here. Photo "Priorities" by Banalities obtained via Flickr under CC BY 2.0 license (no changes made).
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