CABINET CHAILLOT

Decisions G 2/99 and G 3/98 of the Enlarged Board of Appeal of EPO : Non-prejudicial disclosures

Two Boards of Appeal of EPO have referred similar points of law to the Enlarged Board of Appeal in order to obtain a decision related to the interpretation of Article 55(1) EPC : "Non-prejudicial disclosures".

Two Boards of Appeal of EPO have referred similar points of law to the Enlarged Board of Appeal in order to obtain a decision related to the interpretation of Article 55(1) EPC : "Non-prejudicial disclosures"."For the purposes of Article 55(1) EPC, in the case where a priority is recognized for a European patent application, is the time period of six months "preceding the filing of the European patent application" to be calculated from the date of filing of the priority application (the priority date) or from the date of the actual filing of the European patent application ?".The facts* In the T 377/95 case, the Board of Appeal 3.3.4 dealt with an opposition for which the opponent cited an oral disclosure which had occurred before the priority date, arguing that this oral disclosure prejudiced the novelty of the European patent. The proprietor claimed that the prior disclosure was not opposable in the meaning of Article 55(1) EPC because it was due to an evident abuse and it has occurred less than six months before the priority date.* In T 535/95, the Board of Appeal 3.2.4 dealt with an opposition in which a public prior use prejudiced the novelty of the patent. However, the device corresponding to the subject-matter of the claims had been handed over to a customer contrary to the applicant's instructions. Because the unauthorized disclosure had occurred less than six months before the priority date claimed for the European patent, the proprietor invoked Article 55(1) EPC.Article 55 CBEAccording to Article 54 EPC, the novelty of an invention is estimated with respect to the state of the art at the time of the filing. According to Article 89 EPC, when a European patent application claims the priority of a previous application, the priority date is considered as the one of the filing of the European patent application for the purpose of Article 54.Article 55 deals with exceptions. In fact, some disclosures which have occurred within a period of six months "before the filing of the European patent application" are not considered as affecting the novelty of the invention, in particular if they are due to an evident abuse in relation to the applicant.The question referred to the Enlarged Board of Appeal relates to the interpretation of the date of "the filing of a European patent application" in the case of an application claiming a priority.The decision of the Enlarged Board of AppealAfter having considered the travaux préparatoires relating to the EPC, the Enlarged Board of Appeal came to the conclusion that the date to be taken into account is the one of the filing as such and not the one of the priority. The intention of the legislator was to avoid the cumulation of the priority year and of the period of protection for non-prejudicial disclosures.The result is that only a first European filing, without any priority claim, has the benefit of a protection against an unauthorized disclosure. The Enlarged Board of Appeal recognizes that the consequence for the applicant is to have to file a European patent application as quickly as possible if he is aware of an unauthorized disclosure, without waiting for the end of the priority year.The Enlarged Board of Appeal emphasizes also that Article 55(2) EPC foresees as a non-prejudicial disclosure, the one made at official exhibition less than six months before the filing if the applicant states such an exhibition when filing the application and file the certificate of exhibition.In this case, the computation of the six-month period is also made as from the filing of the European patent application.

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