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V.D.3. Multiple priorities for one claim
In T 828/93 (see above) the board confirmed that, because of the legal situation explained above, the possibility mentioned in Art. 88(2) EPC 1973 of multiple priorities for any one patent claim related only to instances where, unlike in the case at issue, the claim contained alternatives and could therefore be split into several subject-matters.
In the opinion given in G 2/98 (OJ 2001, 413) the Enlarged Board of Appeal analysed the legislative intention behind Art. 88(2), second sentence, EPC 1973 and likewise concluded that a distinction has to be drawn between the two following cases. The legislator did not want several priorities to be claimable for the "AND" claim (e.g. a claim to features A and B, with the first priority document disclosing claim feature A alone and only the second priority document disclosing claim feature B). With regard to the "OR" claim the Enlarged Board drew the following conclusion from the historical documentation relating to the EPC 1973: where a first priority document disclosed a feature A, and a second priority document disclosed a feature B for use as an alternative to feature A, then a claim to A or B could enjoy the first priority for part A of the claim and the second priority for part B of the claim. It was further suggested that these two priorities might also be claimed for a claim directed to C, if the feature C, either in the form of a generic term or formula, or otherwise, encompassed feature A as well as feature B. The use of a generic term or formula in a claim for which multiple priorities were claimed in accordance with Art. 88(2), second sentence, EPC 1973 was perfectly acceptable under Articles 87(1) and 88(3) EPC 1973, provided that it gave rise to the claiming of a limited number of clearly defined alternative subject-matters.
In T 620/94 it became apparent that the granted claim 1 covered two alternatives A and B of the invention. Only alternative B was disclosed in the priority document; alternative A was contained only in the subsequent European application. Prior art published during the priority interval rendered obvious alternative A. The patent could thus only be maintained in amended form, i.e. limited to alternative B.
In T 441/93 the European patent related to a process for preparing a strain of the yeast Kluyveromyces, which comprised transforming Kluyveromyces yeast cells with a vector comprising, inter alia, a DNA sequence encoding a polypeptide. The invention disclosed in the priority document was a process for the preparation of new strains of the yeast Kluyveromyces, characterised in that protoplasts of such yeast were mixed with and transformed by vector molecules. The appellant (opponent) argued that the generic claim 1 of the European patent did not enjoy the priority of the previous application because the priority document did not mention the transformation of whole cells, which alternative was covered by claim 1 (and other claims) of the subsequent application.
On the evidence put before it, the board concluded that the references to protoplasts in the priority document were of crucial importance and that no mention had been made in the priority document of the possibility of transforming whole cells. The board held that it was decisive what process had been disclosed in the previous application since claim 1 of the subsequent application was directed to a process. In so far as claim 1 covered whole cell transformation, it could only be entitled to the filing date of the European application. It might be the case that all transformed cells which could be made using a whole cell transformation process could also be made using the protoplast transformation process of the priority document. But even this would not mean that claim 1 was entitled to the priority date for process aspects neither disclosed nor enabled by the priority document. Accordingly, claim 1 was entitled to the filing date of the priority application only in so far as it related to the transformation of protoplasts. The claims could thus be divided into two groups with regard to priority: Group A, enjoying priority rights from the previous application and comprising claim 1 in so far as directed to a process for the transformation of Kluyveromyces protoplasts, and the related further claims; and Group B, only enjoying the priority of the subsequent European application, and comprising claim 1 in so far as not directed to a process for the transformation of protoplasts, and the related further claims.
In T 665/00, there was a quite unusual relationship between the prior use claimed by the applicant, the invention disclosed in the priority document and the subject-matter of the disputed claims which can be summarised as follows:
(a) the alleged prior use took place between the priority date and the filing date of the disputed patent,
(b) the subject matter of that prior use was described in the priority document,
(c) the subject-matter of the prior use fell within the scope of the claims of the disputed patent, but
(d) the priority document did not necessarily describe all the subject-matters claimed.
In those specific circumstances, the question arose whether the alleged prior use might be prejudicial to the novelty of the claims, even though it was described in the priority document.
The board observed that, under Art. 88(3) EPC 1973, the right of priority covered only those elements of the patent application included in the application whose priority was claimed. Different elements of a patent application could have different priority dates. In G 2/98 (OJ 2001, 413), the Enlarged Board of Appeal had stated that the approach of recognising different priority dates also applied to a claim using a generic term or formula, provided that the use of such a term or formula gave rise to the claiming of a limited number of clearly defined alternative subject-matters. Applying that case law to the case in hand, the board concluded that, of the different alternatives contained in claim 10 of the disputed patent (relating to a powder containing hollow microspheres the specific mass of which was described by the generic term "less than 0.1 g/cm3"), the non-compacted powders containing "Expancel DE" microspheres were covered by the claimed date of priority. According to the board, the prior use claimed, which took place after the date of priority and involved a product containing the same "Expancel DE" microspheres, could not therefore destroy the novelty of powders containing those microspheres according to claim 10 of the disputed patent, since they were covered by the date of priority.