Patents

Case Note: Case Note: G0002/98: EPO President's Reference of 29 July 1998

John Lambert

Oct 2001
This article formerly appeared on the Lancaster Buildings  website

Art. 4A (1) of the Paris Convention for the Protection of Industrial Property ("the Paris Convention") grants 12 months priority from the date of filing to any person who applies for a patent in a party to that Convention ("Convention state"). Art. 4H further provides that priority may not be refused on the ground that certain elements of the invention for which priority is claimed do not appear in the claims of the original application provided that those elements are disclosed somewhere in that application. Art. 87 (1) of the European Patent Convention ("the EPC") implements art. 4A by providing 12 months priority in respect of the same invention to any person who has duly filed an application in any Convention state.

Previous Case Law

Those provisions were thought to mean that the scope of the right to a claim to priority was determined by, and limited to, the extent to which the subject matter claimed in the later application had been at least implicitly disclosed in the earlier one. However, in a line of cases beginning with T 73/88 Snackfood/Howard (OJ EPO 1992, 557), it had been held that there could still be priority even where certain subject matter in the later application had not previously been disclosed.

The Reference

Pursuant to his power under art. 112 (1) (b) EPC to refer a point of law to the Enlarged Board of Appeal to resolve conflicting decisions, the EPO President asked:

(1) (a) whether the requirement of same invention in art. 87 (1) meant that the extent of the right of priority was determined by, and limited to, what was at least implicitly disclosed in the priority invention; or
(b) whether a lesser degree of correspondence between the earlier application and the subject matter claimed in the later invention would suffice?
(2) If the answer to 1 (b) was "yes", what criteria should be applied in assessing whether the claim in the later application is in respect of the same invention as the earlier application; and more particularly
(3) where features not disclosed even implicitly in an earlier application had been added to the relevant claim of a later application, or where features defined broadly in the earlier application have been defined more specifically or more narrowly in the later one, whether a right to priority could nevertheless be derived from the earlier application and, if so, what criteria must be met to justify priority in those cases?

The Enlarged Board's Answer
After analysing the above-mentioned articles of the Paris Convention and considering the EPC, including, in particular, art 88 which governs the procedure for claiming priority, the Board held that a narrow or strict interpretation of the concept of "the same invention" was required. Such a view was consistent with the practice of the contracting states and any broader construction was likely to give rise to practical difficulties. The Board's answer to the EPO President was:

"The requirement for claiming priority of "the same invention" referred to in article 87 (1) EPC, means that priority of a previous application on 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."

Having answered the first question affirmatively, it was unnecessary to consider the others.

 

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