3. Identity of invention

Catchword:

For assessing an intermediate generalisation in an amended claim for compliance with Article 123(2) EPC it has to be established whether, because of this generalisation, the subject-matter of the claim extends beyond what was, be it explicitly or implicitly, directly and unambiguously disclosed to the person skilled in the art using common general knowledge in the application as filed. This is the "gold" standard for assessing any amendment for its compliance with Article 123(2) EPC (G 2/10, point 4.3 of the Reasons). If an amended claim comprises only some features of an originally disclosed combination and the features left out of the claim were understood, by the person skilled in the art, to be inextricably linked to the claimed ones, the claim includes subject-matter extending beyond the application as filed. This is the case if the person skilled in the art would have regarded the omitted features to be necessary for achieving the effect associated with the added features. In such a situation the amended claim conveys the technical teaching that the effect can be obtained with the claimed features alone, which is in contrast with and extends beyond the original disclosure that the whole combination of features was needed. The criteria for assessing the validity of a priority for the subject-matter of a claim as set out in G 2/98, no matter whether or not the claim includes intermediate generalisations, correspond to the "gold" standard for assessing any amendment for its compliance with Article 123(2) EPC. In view of Article 88(4) EPC, it is not required that this subject-matter be disclosed in the form of a claim or in the form of an embodiment or example specified in the description of the application from which the priority is claimed. In the passage in point 4 of the Reasons of G 2/98 these items, as derived from the expression "in particular", are simply listed as exemplary parts of the application documents. (Reasons, points 2.4 and 3.2)

Catchword:

If the patent proprietor introduces various differences between the definition of a certain compound in a granted claim and that in the priority application and if despite these differences, the patent proprietor, in arguing that the effective date of the subject-matter of the granted claim is the claimed priority date, asserts that the compound of the granted claim is the same as that disclosed in the priority application, it is the patent proprietor who bears the burden of proving this assertion (point 2.13 of the reasons).

Abstract

In T 419/16 of 24 June 2024 the application on which the European patent was granted (the "application") was filed as a PCT application on 15 February 2005 (the "PCT application"). It named (i) parties A1, A2 and A3 as inventors and applicants for the United States of America (US) and (ii) corporation B1 as applicant for all other designated States. Party A4 was added under R. 92bis.1 PCT as applicant and inventor for the US. The PCT application claimed priority from a US provisional patent application filed on 17 February 2004 in the name of A1, A2 and A3, the inventors (the "priority application").

The board summarised the matters decided by it in its interlocutory decision T 419/16 of 3 February 2022. On novelty, it had noted that the disclosure in document D1, published after the priority date but before the filing date of the patent, would, in the absence of a valid priority, anticipate the subject-matter of claim 1 of auxiliary request 1. The board had decided that the subject-matter of claims 1 and 2 of auxiliary request 1 related to the same invention as disclosed in the previous application in the sense of Art. 87(1) EPC. The appellants had objected to the validity of the claimed priority querying whether a valid transfer of the right to claim priority from the priority application had taken place prior to the filing of the PCT application. Because the board's decision on this issue hinged on an answer to questions referred to the Enlarged Board of Appeal (the Enlarged Board) in consolidated cases G 1/22 and G 2/22, the board had decided to stay the proceedings until a decision was issued by the Enlarged Board.

The board recalled that in G 1/22 and G 2/22 the Enlarged Board had decided that entitlement to claim priority (and any related assignments of priority rights) should be assessed under the autonomous law of the EPC. Furthermore, the Enlarged Board had decided that there was a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Art. 88(1) EPC and the corresponding Implementing Regulations was entitled to claim priority.

According to the board, this presumption applied in the factual situation of the case at hand. Moreover, in the situation where the PCT application was jointly filed by parties A and B, (i) designating party A (here A1, A2 and A3) as inventors and applicants for the US only and party B (here B1) for all designated States except the US, and (ii) claiming priority from an earlier patent application (here the priority application) designating party A as the applicant, the joint filing implied an agreement between parties A and B, allowing party B to rely on the priority, unless there were substantial factual indications to the contrary.

Appellant-opponent 5 argued that contrary to the opposition division's finding in the decision under appeal, there had been no valid transfer of the priority right prior to the filing of the PCT application. Appellant-opponent 5 based this objection on the reason that the transfer had not been proven by the respondent in a formal way.

In the board's opinion, in view of the Enlarged Board's decision that the joint filing of the PCT application implies an agreement between parties A and B, allowing party B to rely on the priority, the aforementioned objection could not succeed because there was no requirement under the EPC that a transfer of the priority right be proven in a formal way. Furthermore, there were no substantial factual indications brought forward by the appellants that could lead to the conclusion that the joint filing of the PCT application did not imply an agreement between the applicants of the priority application and corporation B1 as the co-applicant of the subsequent PCT application (for all States other than the US). Thus, the presumption of entitlement to priority was not rebutted, and the priority claimed from the priority application as regards the subject-matter of claims 1 and 2 was valid.