T 0969/14 - partial priorities' transfer
This is an interesting appeal lodged against an opposition decision to revoke a European patent on the ground of novelty under Art. 54(3), EPC.
The situation is as follows:
D16 is a European patent application filed on 27/06/2000 by applicant Chiesi.
D14 is a PCT application filed on 17/04/2001 by Chiesi claiming priority of D16.
EP (contested patent) is filed by applicant Vectura on 17/04/2001 claiming also priority of D16.
The case relates to two inventions A and B, where A encompasses B. EP claims A and D14 claims B. D16 discloses both A and B.
Companies Chiesi and Vectura had a joint-venture where it was agreed about the ownership of the respective IP. The rights of ownership of D16 was assigned from Chiesi to Vectura before filing of EP. However, B's right of priority remained with Chiesi in a re-assignment of the priority right from Vectura to Chiesi.
The result is that Vectura owns a valid priority right only for (A-B) but claims A which is broader. The consequence is that claim 1 of EP is not novel over D14 under Art. 54(3), EPC because D14 validly claims priority of D16 for B, thereby confirming the decision of the Opposition Division.
When Vectura files a fourth auxiliary request in appeal proceedings disclaiming B from A, i.e. based on (A-B), for restoring the priority right, it is too late. The BoA does not admit said request into the appeal proceedings.
The logical conclusion is that an applicant cannot transfer a partial priority right and at the same time keep it for claiming in a broader context.