EPO – Principle of partial priorities applied to the assessment of what is the first application from which priority can be claimed

Posted: January 24th, 2018

EPO, Technical Board of Appeal 3.3.07, decision of November 9, 2017 in case T 282/17 – Coated tablets/JOHNSON & JOHNSON

In its decision G 1/15 (OJ EPO 2017, A82), the Enlarged Board of Appeal of the EPO had decided that a generically defined claim may enjoy partial priority from a first application disclosing an alternative part of its subject-matter. This has the effect that a disclosure of this part during the priority interval cannot be cited as prior art.

The reported decision applies this principle to the assessment of what is the first application within the meaning of Article 87 (1) EPC, corresponding to Art. 4 A(1) of the Paris Convention, from which priority can be claimed. The claim at issue for a coated tablet defined a feature for the structure of the tablet by a range of 3% to 33% of a given length.

This range was disclosed for the same tablet in the US continuation-in-part- application from which priority was claimed. However, a previous application in the US from which the priority application is the continuation-in-part already defined a narrower range of 5% to 33% and disclosed all other features. This means, that the previous application already gave rise for a right of priority for a tablet with the narrower range.

On the basis of the principle laid down in G 1/15, the claimed subject-matter has to be conceptually divided into two parts, i.e. 3% to 5% enjoying priority from the continuation-in-part disclosing a tablet with this part of the range as claimed for the first time and 5% to 33% not enjoying priority.
The catchword of the decision reads:
For reasons of consistency, the rationale of decision G 1/15 (concept of partial priority) must also apply in the context of deciding whether an application from which priority is claimed is the first application within the meaning of Article 87(1) EPC. Indeed, just as a priority application and a patent claiming priority therefrom may partially relate to the same invention, the priority application and an earlier application filed by the same applicant may also partially relate to the same invention. In that case, the priority application would be the first application in respect of only that part of the invention which is not the same as in the earlier application.

A copy of the decision can be read here.

Reported by: Dr. Rudolf Teschemacher, Bardehle Pagenberg

One Response

  1. Attentive observer says:

    Independently of the possible application of G 1/15 in the present instance, I would think that the opposition division erred when it found that when applying Art 123(2) it concluded that the priority based on D1 was valid.

    In T 842/05, an intermediate generalisation was carried out between the priority document and the later document. The Board held that the intermediate generalisation should not be queried as added subject-matter, but that the consequence was that the priority was not valid, as it was not the same invention as that disclosed in the priority document.

    Going from 5 – 35% in D 22 to 3-35% in D1 is in principle is no more than adding subject-matter between the two applications. As this was between two priority documents, the immediate consequence is that the priority for of 3 – 35 % is not valid. The subsequent invention, in D 1, 3 – 35%, is not the same as the one in the earlier priority document D 22, i.e. 5 – 35 %.

    By acknowledging that there was added subject-matter between D 22 and D1 the opposition division should have realised that it was not the same invention and the priority based on D1 was questionable. It is however correct to say that D1 is the first application disclosing 3-35%, but this is only half the story.

    The opposition division mixed up the issues of priority and added subject-matter from one application to the other.

    What is also important is that D1 is a continuation application of D22. It is not the first attempt I see from a US applicant to claim priority from a continuation rather than from the original application. Often it may work with the first continuation, but it has to be checked. It does not work with further continuations as they are often filed more than 12 months later. This decision shows as well that one has to be very careful with continuations in part in the US style.

    One can be thankful to the opposition division for making this mistake, as it allows the board to clarify the situation and apply to G 1/15 to it. The conclusion drawn by the board in applying G 1/15 to the situation is quite logical.

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