Priority right : Opinion G 2/98 of the Enlarged Board of Appeal of the EPO
26.07.2001
According to Article 87 EPC, the priority date of a first application may be claimed when the second application is for the "same invention" than the first one.
According to Article 87 EPC, the priority date of a first application may be claimed when the second application is for the "same invention" than the first one.As the Boards of Appeal of the EPO have rendered conflicting decisions on this point, the President of the EPO has referred to the Enlarged Board of Appeal which gaves the OPINION
G 2/98 on May 31, 2001 in order to clarify the definition of "same invention".According to a first type of decisions (T 116/84, T 85/87, T 295/87 ...), the priority of a subject-matter that was at least implicitly disclosed in the first application may be claimed for the second application. The condition "at least implicitly disclosed" included both the case where the claims of the second application were broadened in relation to the disclosure of the first filing and the case where the scope of the invention was more narrowly defined in the second application.According to a second type of decisions (T 73/88, T 16/87, T 255/91, T 364/95 ...), the priority right has been recognized even if a technical feature (an additional feature) has been added which was not described in the first application. This has been possible because the additional feature was not an essential feature for the purpose of determining priority, this characteristic depending upon "its relationship to the character and nature of the invention."For example, the allowed additional feature could be a more specific embodiment if the priority document disclosed the more general feature and if the addition of the more specific embodiment did not change the character and nature of the claimed invention.According to another approach (T 77/97), the second application was examined with respect to the "novelty test" which was in fact a "disclosure test". The term "same invention" had in this case to be interpreted in conformity with Article 88(2) to (4) EPC : the elements of the second application have to be specifically disclosed in the priority document.Thus, the Enlarged Board of Appeal had to decide when a claim of a European patent application contains a feature which has not been disclosed in the priority application if a right of priority can be acknowledgeda) when the feature is not related to the function and effect of the claimed invention and does not provide an additional technical contribution to the invention ; orb) when there exists unity of invention between the invention as defined in that claim and subject-matter disclosed in the priority document, according to Article 4F of the Paris Convention.Reasons for the OpinionPursuant to Article 4H of Paris Convention, 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 of the priority application, provided that the application as a whole specifically discloses, explicitely or implicitly, such elements.When the subject-matter of the claim is not disclosed in the priority application, according to Article 4F of the Paris Convention, unity of invention must exist between two or more inventions disclosed in the application claiming one or more priorities.In the EPC, paragraphs 2 to 4 of Article 88 correspond to articles 4F and 4H of the Paris Convention.Single claim with multiple priorities The Enlarged Board of Appeal gives as example the following cases where a single claim may or may not claim multiple priorities:i) case of the "AND"-claimWhere a first priority document discloses a feature A and a second priority document discloses a feature B for use together with feature 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.ii) case of the "OR"-claimWhere 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.These two priorities may also be claimed for a claim directed to C, if the feature C, for example in the form of a generic term or formula, encompasses feature A as well as feature B.This is also in accordance with Articles 87(1) and 88(3) EPC.Study of an example concerning two conflicting European patent applicationsThe Enlarged Board of Appeal then analysed the following case :two applicants X and Y have filed national and European patents at different dates t :t1 : filing of a national patent N1 for the invention A + B by applicant Xt2 : filing of a national patent N2 for the invention A + B' (or A + B + C) by applicant Yt3 : filing of a European patent EP1 for the invention A + B (or A + B + C) by applicant X claiming the priority of N1t4 : filing of a European patent EP2 for the invention A + B' (or A + B + C) by applicant Y claiming the priority of N2According to the Enlarged Board of Appeal, if the priority acknowledgment depends on whether or not B' is an essential modification of B (or C added to A + B is an essential feature) then the validity of EP2 will depend on the extensive or broad interpretation of the concept of "the same invention".Concerning the proposal in the decision T 73/88 to make a distinction between technical features which are related to the function and effect of the invention and technical features which are not, the Enlarged Board of Appeal explains that this is not a solution because it gives rise to arbitrariness. Where the later European patent application constitutes a selection invention in respect of the subject-matter disclosed in the priority application, the priority claim should not be acknowledged if the selection invention is considered "novel" according to the criteria applied by the EPO.The conclusion of the Enlarged Board of Appeal is that priority of 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.
