4. Identity of invention
4.3. Disclosure in the previous application as a whole
G 2/98 (OJ 2001, 413) stated that pursuant to Art. 4H Paris Convention, priority may not be refused on the ground that certain elements of the invention for which priority is claimed do not appear among the claims formulated in the application whose priority is claimed, provided that the application as a whole specifically discloses such elements. Priority for a claim is to be acknowledged if the subject-matter of the claim is specifically disclosed, be it explicitly or implicitly, in the application documents relating to the disclosure, in particular, in the form of a claim or of an embodiment or example specified in the description of the application whose priority is claimed. Art. 88(4) EPC corresponds almost literally to Art. 4H Paris Convention.
In earlier decisions it was likewise held that, under Art. 88(4) EPC, it suffices if the features claimed in the later application are disclosed by the earlier application taken as a whole (T 184/84, T 497/91 and T 359/92).
If the priority document does not include any claims, this does not mean that the conditions of Art. 88(4) EPC are not fulfilled; Art. 88(4) EPC cannot be construed as meaning that a priority document must comprise claims in order to form a regular national filing within the meaning of Art. 87(3) EPC which can give rise to a right of priority (T 469/92). While in such a case it could be more difficult to establish whether the priority document discloses the same invention, the principles of G 2/98 equally apply (T 1437/10). See also e.g. T 525/13, in which the right of priority claimed from a US provisional application was held invalid.
T 409/90 (OJ 1993, 40) showed that a broad claim in the previous application was not necessarily a suitable basis for a priority right. When considering what was disclosed in a priority document's claim it was necessary to bear in mind the purpose of the claim, i.e. to define the protection sought. The fact that a claim in a priority document was broad enough to cover specific subject-matter filed for the first time in a later application was not by itself sufficient evidence that such subsequently filed subject-matter had already been disclosed in the priority document, or that subsequent claims based on the later-filed subject-matter still defined the same invention as that which was the subject of the priority document (see also T 77/97, summarised in chapter II.D.4.8 below).
In T 515/00 the appellant had argued that features pertaining to hardware components relating to the printing process were no longer present in the claim and that there was no basis in the priority document for the deletion of these features. The board referred to G 2/98 (OJ 2001, 413, point 8.3 of the Reasons), in which the Enlarged Board had warned against an approach whereby a distinction was made between technical features which were related to the function and the effect of the invention and technical features which were not. Priority could not be acknowledged if a feature was modified or deleted, or a further feature was added. The board further noted that a claim passed the priority test if its subject-matter could be derived from the previous application as a whole. It followed that comparing the claim with the corresponding claim of the previous application was not a valid approach to performing the "priority test". The priority test was basically a disclosure test in which the skilled reader could use common general knowledge. If, in the description of the previous application, a distinction was made between features that were essential for the performance of the invention and features which were not, the latter could be deleted from the subject-matter of a claim without losing the right to priority. The omitted hardware components were nowhere presented as essential features in the priority document's description. The skilled reader would not have any reason to assume that they were essential merely because they were present in claim 1 of the priority document. The board concluded that the priority claimed was valid. This decision was followed in T 321/06.
Features of the invention may also be disclosed in the drawings (T 169/83, OJ 1985, 193; T 837/13; also T 1434/13, in which the drawings of the priority document were found not to show all the alternatives of claim 1).
In T 449/04 the board emphasised that the "same invention" considered in Art. 87(1) EPC 1973 did not encompass the comparative example(s) which were clearly and definitely excluded from the scope of the invention in an earlier application of the applicant (see also fuller summary in this chapter II.D.5.1.).
- T 0493/23
In T 493/23 the invention related to a threaded pipe connection. The patent had been granted on the basis of an application (the "PCT application") filed on 15 September 2017 published under the PCT and claiming priority from application JP 2016-181176 (the "priority application"). The appellant (opponent) argued that neither claim 1 of the twelfth auxiliary request nor claim 1 of the thirteenth auxiliary request validly claimed priority from the priority application.
(1) Twelfth auxiliary request
Compared to the priority application, claim 1 of the twelfth auxiliary request had been amended by adding, inter alia, feature 1.3. This requirement limited the female thread in that it should include a varying-thread-width portion having a thread-ridge width gradually increasing and a thread-groove width gradually decreasing toward a centre of the box. The parties agreed that this additional feature was taken verbatim from the description of the priority application and, in this respect, mentioned paragraph [0049] of D10 (a marked-up version of the English translation of the PCT-application showing the changes made in relation to the priority application). The appellant's objection was directed against the fact that the additional constraint of paragraph [0049] of D10 that the thread-groove width of the female thread corresponds to the thread-ridge width of the male thread in the respective varying-thread-width portions was not incorporated in claim 1 of the twelfth auxiliary request. The appellant argued that the verb "to correspond" implied that the widths were equal. Contrary to the view of the opposition division, the additional text in claim 1, did not require this.
According to the board, the expression "correspond to" in paragraph [0049] of D10 was not to be understood in a broad sense as encompassing variations that result in gaps between the thread flanks. The opposition division seemed to have inferred the additional constraint of paragraph [0049] from features 1.4 to 1.6 of claim 1 of the then auxiliary request 9. However, the board was unable to derive from the general wording of these features whether or not the widths of the individual female ridges and grooves corresponded to those of the male grooves and ridges, respectively, in the varying-thread-width portions. Also the additional features 1.7a and 1.8a of claim 1 of the twelfth auxiliary request did not imply the constraint set by the last sentence of paragraph [0049] of D10. The board concluded that there was no direct and unambiguous disclosure in the priority application of a threaded connection having feature 1.3 of claim 1 without the additional constraint.
In a further line of argument and referring to G 1/15, the respondents (patent proprietors) submitted that claim 1 enjoyed partial priority for those threaded connections where the widths were the same in the varying-thread-width portions. The board was not persuaded. In the present case, claim 1 did not contain any generic expression that could be understood to encompass alternative subject-matter. Claim 1 was not a generic "OR"-claim in the sense of G 1/15. The board concluded that claim 1 of the twelfth auxiliary did not validly claim priority. As a result, D5 was novelty destroying.
(2) Thirteenth auxiliary request
All three lines of argument raised by the appellant were rejected by the board. On the first, the board concluded that, compared to the priority application, the meaning of the expression "toward a centre of the box" in feature 1.3 of claim 1 did not change by adding it to a claim which did not specify the type of threaded connection. Also for embodiments of the integral-type connection there was basis in the priority application for the claimed changes of the female thread width towards the centre of the box. On the second line of argument (which built further on the objection raised in the context of the twelfth auxiliary request), the board concluded that the various restrictions of claim 1 were such that also the feature disclosed in the last-but-one sentence of paragraph [0049] of D10 was implicit. The third line of argument was directed against the omission from claim 1 of the physical location of the constant-thread-width portions and the varying-thread-width portions, despite it being disclosed in paragraphs [0054] and [0055] of D10 on which the amendments of features 1.5 and 1.6 were based. The board considered these positions to be implicit in claim 1. The board concluded that claim 1 of the thirteenth auxiliary request validly claimed the priority from the priority application. The effective date was thus 16 September 2016. As a consequence, D5 was not comprised in the state of the art under Art. 54(2) or (3) EPC.