T 0557/13 (Partial Priority / Infineum) of 17.07.2015
- European Case Law Identifier
- ECLI:EP:BA:2015:T055713.20150717
- Date of decision
- 17 July 2015
- Case number
- T 0557/13
- Petition for review of
- -
- Application number
- 98203458.9
- Language of proceedings
- English
- Distribution
- No distribution (D)
- Download
- Decision in English
- Other decisions for this case
- T 0557/13 Partial priority II / Infineum 2017-07-28
- Abstracts for this decision
- -
- Application title
- Use of cold flow improvers in fuel oil compositions
- Applicant name
- Infineum USA L.P.
- Opponent name
- Clariant Produkte (Deutschland) GmbH
- Board
- 3.3.06
- Headnote
- -
- Relevant legal provisions
- European Patent Convention Art 100(a) 1973European Patent Convention Art 100(c) 1973European Patent Convention Art 112(1)(a) 1973European Patent Convention Art 123(2)European Patent Convention Art 52(1) 1973European Patent Convention Art 54(3) 1973European Patent Convention Art 76(1)European Patent Convention Art 87European Patent Convention Art 88European Patent Convention Art 89 1973Paris Convention Art 4g, 4f
- Keywords
- Priority - Partial priority
Novelty - Parent/divisionals
Novelty - State of the art under Article 54(3) EPC
Referral to the Enlarged Board of Appeal - Points of law of fundamental importance
Referral to the Enlarged Board of Appeal - Divergence in case law - Catchword
- The following questions are referred to the Enlarged Board for decision:
1. Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic "OR"-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document?
2. If the answer is yes, subject to certain conditions, is the proviso "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" in point 6.7 of G 2/98 to be taken as the legal test for assessing entitlement to partial priority for a generic "OR"-claim?
3. If the answer to question 2 is yes, how are the criteria "limited number" and "clearly defined alternative subject- matters" to be interpreted and applied?
4. If the answer to question 2 is no, how is entitlement to partial priority to be assessed for a generic "OR"-claim?
5. If an affirmative answer is given to question 1, may subject-matter disclosed in a parent or divisional application of a European patent application be cited as state of the art under Article 54(3) EPC against subject-matter disclosed in the priority document and encompassed as an alternative in a generic "OR"-claim of the said European patent application or of the patent granted thereon?
Order
For these reasons it is decided that:
The following questions are referred to the Enlarged Board for decision:
1. Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic "OR"-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document?
2. If the answer is yes, subject to certain conditions, is the proviso "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" in point 6.7 of G 2/98 to be taken as the legal test for assessing entitlement to partial priority for a generic "OR"-claim?
3. If the answer to question 2 is yes, how are the criteria "limited number" and "clearly defined alternative subject- matters" to be interpreted and applied?
4. If the answer to question 2 is no, how is entitlement to partial priority to be assessed for a generic "OR"-claim?
5. If an affirmative answer is given to question 1, may subject-matter disclosed in a parent or divisional application of a European patent application be cited as state of the art under Article 54(3) EPC against subject-matter disclosed in the priority document and encompassed as an alternative in a generic "OR"-claim of the said European patent application or of the patent granted thereon?