6.3. Multiple priorities or partial priority for one claim
6.3.3 Application of G 1/15 in the jurisprudence of the boards
In case T 260/14 the opposition division had denied priority and found that claim 1 lacked novelty pursuant to Art. 54(3) EPC in view of a working example disclosed in the priority document (D5) itself, which example was also disclosed in the description of the patent in suit. (D5 had been dealt with as a case of "toxic priority".) In accordance with G 1/15 (OJ 2017, A82), the board first identified the working example as being relevant subject-matter disclosed in the priority document (cf. G 2/98, OJ 2001, 413). It then analysed whether claim 1 encompassed the working example, and whether that example was alternative subject-matter by virtue of a generic "OR" claim, by comparing the ambit of the claim with the content of the priority document. The claim was to a dental impression material comprising a base paste and a catalyst paste. Both pastes were described using generic features such as "polyethers" and "copolyether of ethyleneoxide". The working example was one specific embodiment of the claim. Multiple alternative working examples would be possible, with different variants falling within the generic features of the claim. The example was thus alternative subject-matter by virtue of a generic "OR" claim which fell within the ambit of claim 1. Hence, the part of claim 1 concerning that example was entitled to partial priority.
Further decisions applying the approach of G 1/15 include T 1526/12 (hair care composition), T 557/13 of 28 July 2017 date: 2017-07-28 (use of a cold flow improver), T 2466/13 (insulation panel), T 1399/13 (polymerisation process), T 88/14 (low-fat confectionary product), T 1519/15 (sensing circuit comprising sensing capacitors), T 1728/16 (solid pharmaceutical dosage form), T 933/18 (method for preparing a biosensor), T 401/19 (chromatographic purification method), T 335/20 (progranulin for use in treating dementia), T 1946/21 (inflatable pool) and T 307/22 (dishwasher).
In T 282/12 the board held that, for reasons of consistency, the rationale of decision G 1/15 (OJ 2017, A82) must also apply in the context of deciding whether an application from which priority is claimed is the first application within the meaning of Art. 87(1) EPC (see more detailed summary of this aspect of the decision in chapter II.D.5.1. above). The board also cautioned in this context against assessing priority by performing a test under Art. 123(2) EPC, which approach had led the opposition division to find that D1 was the first application. The assessment of priority and of the requirement of Art. 123(2) EPC were both based on the concept of disclosure. However, applying a test under Art. 123(2) EPC could lead to wrong conclusions in certain circumstances because the concept of "partial" validity of an amendment does not exist, whereas "partial priority" does. Relating this to the facts of the case (gap width of coated tablet), the board agreed that amending a range from 5% to 33% (i.e. the range in claim 1 and in the priority document D1) to 3% to 33% (i.e. the range in the proprietor's earlier application D22) would result in the addition of subject-matter. However, both of these encompassed an identical part, i.e. the sub-range 5% to 33%, which defined alternative dosage forms that did not change their identity, whether they were claimed as such or as part of a broader group of compositions, including other compositions with a gap width outside the range 5% to 33%. Thus, in the present case, the mere application of an assessment pursuant to Art. 123(2) EPC to the assessment of the validity of the priority claim did not allow the conclusion that D1 and D22 related in part to the same invention and therefore that the priority was not valid over the whole scope of claim 1.
T 437/14 of 12 March 2019 date: 2019-03-12 was the board's final decision following its referral of questions on undisclosed disclaimers to the Enlarged Board in case G 1/16 (OJ 2018, A70; the board's findings on the admissibility of the undisclosed disclaimers are summarised in chapter II.E.1.7.2). In view of the added disclaimers, opponent 3 had argued that claim 1 did not validly claim a priority right and that its subject-matter lacked novelty over D57 and D58, two divisional applications of the application on which the patent was based. According to the board, for this, two conditions would have to be fulfilled: that at least one embodiment of the divisional application/s was encompassed by claim 1, and that claim 1 did not enjoy a priority right or at least a partial priority right for the part/s relating to those embodiment/s. Citing G 1/03 (OJ 2004, 413), the board was satisfied that the two disclaimers did not provide a technical contribution and fulfilled the requirements of Art. 123(2) EPC. Therefore, the subject-matter of claim 1 enjoyed priority from the earlier application. As far as D57 and D58 disclosed specific compounds falling within claim 1 and validly claimed priority from the earlier application, claim 1 validly claimed a corresponding partial priority right from the earlier application for those compounds. Claim 1 was a generic "OR" claim encompassing alternative subject-matter directly and unambiguously disclosed in the priority document and was thus entitled to a partial priority for that alternative subject-matter within the meaning of G 1/15 (OJ 2017, A82). Thus, D57 and D58 did not form part of the state of the art under Art. 54(3) EPC for the purpose of assessing novelty.
In T 88/21 the application in suit and D1 were both filed by the appellant. The application in suit claimed priority from D0. D1 claimed priority from unpublished D1a, which was filed prior to D0. It had not been contested that D0 and D1 belonged to the appellant. Claim 1 had been amended to include an undisclosed disclaimer based on examples 4A-D and 5A of D1. According to the board, the subject-matter of claim 1 of the application in suit before the addition of the undisclosed disclaimer was anticipated by examples 4AD and 5A of D1. The effective date of these examples in D1 was the filing date of D1a, which was before the filing date of D0. Hence, as far as the subject-matter of examples 4A-D and 5A of D1/D1a was concerned, D1a – and not D0 – was the first application within the meaning of Art. 87(1) EPC. Therefore, the application in suit could not validly claim the priority of D0 for the subject-matter of these examples. Since D1 was published prior to the filing date of the application in suit, D1 was prior art under Art. 54(2) EPC for that subject-matter. See also T 1222/11 and T 282/12 in chapter II.D.5.1. See also in chapter II.E.1.7.3.
- T 2565/22
In T 2565/22 the patent concerned a system for replacing a deficient native heart valve. The proprietor submitted in the written procedure that for each feature of claim 1 a basis could be found in the priority application D34. In its communication the board expressed the preliminary view that only a partial priority was validly claimed. At the oral proceedings, the proprietor did not provide any further argument but merely referred to its written submission in this respect.
The board explained that, compared with D34, granted claim 1 had been broadened by deleting the feature "adapted to be deployed by exerting substantially radial forces from within by means of a deployment device". Claim 1 could be regarded as a generic OR-claim in the sense of G 1/15. The two alternatives comprised by the claim were:.
(a) a device comprising a support frame "adapted to be deployed by exerting substantially radial forces from within by means of a deployment device to a deployed state", such as a balloon-expandable stent; and.
(b) a device comprising a support frame which is not adapted in this way, i.e. non-balloon-expandable or self-expandable.
Contrary to the proprietor's submission, D34 did not disclose the mechanism by which the frame expands in a generic way. Even though the expansion mechanism was not specified each time the frame was mentioned, D34 was directed to devices adapted to be deployed by exerting substantially radial forces from within by means of a deployment device. Unlike D35, D34 did not disclose any self-expandable frames or deployment methods that did not involve deployment means such as a balloon catheter. The fact that nitinol was disclosed as a material for the frame in D34 did not imply that its shape memory properties were used to provide a self-expandable frame, i.e. a stent made of nitinol was not necessarily self-expanding even though this material had been used for this purpose in several prior art documents. Therefore, D34 did not disclose the combination of features of granted claim 1 without the feature omitted by granted claim 1. The board was thus of the opinion that only part (a) above enjoyed priority. Accordingly, D1 was prior art under Art. 54(2) EPC for part (b) and could be considered in deciding whether there had been an inventive step.
- 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.
- T 0518/22
In T 518/22 the board established that the "A3" mutant disclosed in D2 anticipated the subject-matter of claim 1 of auxiliary request 1 at least under Art. 54(3) EPC.
Claims 1 and 9 of auxiliary request 2 differed from the respective claims in auxiliary request 1 in that an undisclosed disclaimer had been introduced to exclude the A3 mutant disclosed in D2 from the subject-matter claimed.
The board explained that, according to G 1/03, an amendment to a claim by the introduction of a disclaimer may not be refused under Art. 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed. G 1/03 defines the criteria when such an undisclosed disclaimer is allowable, stipulating that it can be introduced into a claim inter alia to restore novelty by delimiting a claim against the state of the art under Art. 54(3) EPC but not under Art. 54(2) EPC (except for a so-called accidental disclosure).
In order to determine whether D2 was prior art under Art. 54(2) or (3) EPC for the claimed subject-matter, the board assessed whether the subject-matter of claim 1 as a whole was entitled to claim priority from P and whether D2 was entitled to claim priority from P1.
The board found that D2's priority based on P1 was valid. Appellant I had objected to D2's formal entitlement to priority because the applicants of P1 and those of the international patent application D2 were not the same. The board explained that G 1/22 and G 2/22 established that a presumption exists that a claim to priority is valid by way of an implicit agreement on the transfer of the right to claim priority in the absence of evidence that such an agreement (implicit or explicit) did not exist. This presumption applies to any case where the subsequent applicant is not identical with the priority applicant. On account of this general teaching, the board understood that the presumption applied also to patent applications cited as prior art, as in the present case (see also T 521/18).
This presumption could be rebutted to take into account "rare exceptional cases" where the subsequent applicant could not justifiably rely on the priority (G 1/22). This, however, involved the reversal of the burden of proof, i.e. the party challenging the subsequent applicant’s priority entitlement (here appellant I) had to prove that this entitlement was missing. Merely raising speculative doubts was not sufficient. Instead, evidence was required that specific facts supported serious doubts about the subsequent applicant's entitlement to priority (G 1/22). In the absence of evidence suitable to establish that the alleged real priority right holder did not allow the subsequent applicant to rely on the priority (see also T 1975/19), appellant I's objection against D2's formal entitlement to priority from P1 was not sufficient to rebut the presumption of validity, which always existed on the date on which priority was claimed (G 1/22). Hence, D2 validly claimed priority from P1.
As regards the validity of the patent's priority claim based on P, the board established that the relevant date for the subject-matter of claim 1 in several embodiments concerning SEQ ID NOs: 5 to 8 was the filing date of the patent application, whereas several embodiments of claim 1 in relation to SEQ ID NO: 4 were entitled to claim partial priority from P (G 1/15).
Therefore, D2 was prior art under Art. 54(2) EPC for the subject-matter of claim 1 not enjoying priority, i.e. in relation to several embodiments concerning SEQ ID NOs: 5 to 8, and prior art under Art. 54(3) EPC for the subject-matter of claim 1 enjoying priority, i.e. in relation to several embodiments concerning SEQ ID NO: 4.
Since the undisclosed disclaimer added to claim 1 in auxiliary request 2 removed embodiments of D2 which belonged to the state of the art pursuant to Art. 54(2) EPC and were not an accidental disclosure, such amendment was not allowable under Art. 123(2) EPC. Auxiliary request 2 comprised added subject-matter (G 1/03 and G 1/16) and did not fulfil the requirements of Art. 123(2) EPC.