July 26, 2021

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Partial priority beneath European patent law

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The application of the priority right is based on precise requirements, as governed by content articles 87 to 89 of the European Patent Convention (EPC), and also will allow for partial priorities to be claimed.

The suitable to priority

Posting 87 of the EPC lets anybody who has filed a very first patent application in pretty much any jurisdiction to file a European Patent (EP) software for the exact same creation inside of 12 months of the initial application. That EP application will then benefit from the submitting day of the previously software (as set out by report 89 EPC), in unique through the analysis of its patentability.

In other phrases, only paperwork released ahead of the submitting day of the before software will be considered when evaluating the novelty and inventive move of the EP application (articles or blog posts 54(2) and 56 EPC), and the information of EP applications filed right before the priority date but printed following will only be deemed when examining the novelty of the European application (short article 54(3) EPC).

What constitutes the ‘same invention’?

This priority ideal is granted to the identical creation, nonetheless it is often attractive to change the description and/or the promises between the earlier countrywide application and the European software, regardless of whether for specialized (identification of new improvements) or lawful (applicable prior documents) explanations.

The query then occurs as to the diploma of similarity demanded concerning the creation claimed in the EP application and that disclosed in the before software.

Some EPO Boards of Charm experienced regarded that an creation could advantage from the priority suitable even if features had been extra, so lengthy as these extra options did not confer any further specialized impact (e.g. determination T 364/95).

This lenient practice has made it probable, for that reason, to increase an EP application beyond the earlier application even though even now benefiting from priority. Having said that, other Boards of Appeal have adopted a much more rigorous follow, recognising the validity of the priority correct only in the function of a rigid similarity among the claimed invention and the invention disclosed at minimum implicitly in the before application (e.g. decision T 77/97).

The EPO’s Enlarged Board of Charm noted that authorized difficulties could be brought about by the much more lenient practice and highlighted, in specific, the hazard that the specialized impact could evolve for the duration of the grant proceedings, as properly as the prospective impact on the very first application and on the evaluation of novelty.

It opted for the most arduous practice in its determination G 2/98, by stating that the claimed invention will have to, in get to benefit from the precedence appropriate, be disclosed straight and unambiguously to the person skilled in the artwork, in the previously priority application, both implicitly or explicitly.

This criterion is the exact as that utilised to assess amendments in accordance to article 123(2) EPC and to appraise the novelty of a claimed item according to short article 54(1) EPC.

Knowing partial priorities

Nonetheless, a declare may perhaps consist of numerous claimed objects, that is to say numerous precise inventions – for example, in the situation of solutions – and, in accordance to write-up 88(2) EPC, such assert can advantage from various priorities. Below, determination G 2/98 incorporates a short commentary, matter to interpretation, about the precise case of a generalisation of options among the earlier software and the EP application when proclaiming priority.

This situation problems for case in point the amendment of ‘copper‘ into ’metal‘, or amending a array of values ​​from 80 to 100 to 80 to 120. The Board identified that the use of a generic expression or system in a claim for which various priorities are claimed (in accordance with posting 88(2) EPC) is completely appropriate underneath posts 87(1) and 88 (3) EPC, delivered that it potential customers to claiming a limited amount of plainly described choice objects.

Following this commentary, the widening of chemical formulation, ranges of values ​​or chemical compositions, as as opposed to the very first applications, was deemed by several Boards of Appeal not to drop within just this definition, and the precedence claim was thus deemed to be invalid (e.g. choice T 1127/00).

Conversely, in very similar situations, other Boards of Appeal thought of that a generic claim could be “divided” into a number of objects, some explained in the previously application and benefiting from the priority ideal, others not (e.g. conclusion T 665/00).

In determination G 1/15, the EPO’s Enlarged Board of Enchantment examined the provisions of posting 88(2) and (3) EPC and Post 4 of the Paris Convention, as properly as the preparatory do the job for the EPC, to validate the latter practice.

Accordingly, partial precedence is regarded a sub group of many priorities for which there is no added prerequisite. The commentary to point 6.7 of final decision G 2/98 does not represent a limitation of the right of priority in the situation of partial priorities as a result.

In issue 6.4 of its final decision G 1/15, the Enlarged Board of Attractiveness describes a basic two-issue exam to establish the validity of a partial precedence:

  • Decide the object that the proficient individual would have deduced right and unambiguously from the before software, employing his/her common technological awareness and having into account the features disclosed implicitly.
  • Analyze no matter whether this object is present in the statements of the EP software.

If the remedy to the 2nd level is ‘yes’, then this object advantages from the day of the previously software, but any item showcased in the remaining section of the claim will not.

To use the examples previously mentioned, this indicates that only the object having the characteristic ‘copper’ would reward from the priority day, whereas the item obtaining the feature ‘all metals apart from copper’ would not. Furthermore, the object with the array of values ​​from 80 to 100 would gain from precedence, but the item with the variety of values ​​from more than 100 to 120 would not.

What does this necessarily mean in exercise?

In summary, if a demanding similarity is demanded amongst the creation disclosed in the earlier application and the creation claimed by the EP application, it is achievable to distinguish numerous objects benefiting from different priorities within just the exact same declare, even if a claimed aspect is generalised compared to the previously application (as for every the extended price assortment) and any additional limitation of the precedence correct is excluded.

It is feasible to prolong or amend a patent software just before submitting it as an EP software under priority thus. Having said that, it is crucial to keep in brain that only the objects correctly disclosed in the previously application will have the reward of precedence.

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