Résumé de EPC2000 Art 088(4) pour la décision T1762/21 du 14.02.2024

See also abstract under Art. 123(2) EPC. In T 1762/21 the appellant (opponent) disputed the validity of the priority claim for the subject-matter of claims 1 and 7 of the main request. It argued that the validity of the priority claim could not be assessed by applying the same criteria as for the assessment of added subject-matter. It should be assessed according to the principles set out in G 2/98. According to the appellant, G 2/98 did not consider intermediate generalisations, which were of importance only for the assessment of added subject-matter. The subject-matter of the claim for which priority was claimed had to be clear ("deutlich" in the German version of G 2/98). Moreover, it had to be disclosed in the form of a claim or in the form of an embodiment or example specified in the description of the application whose priority was claimed. The board disagreed. It held that the same considerations applied to the assessment of the priority claim as to the assessment of added subject-matter. The disclosure of the description and the drawings of the priority document were identical to those of the application as filed. The priority document differed from the application as filed only in that it did not contain any claims. However, the claims of the application as filed were not required in order to provide a basis for claims 1 and 7 of the main request. The board recalled that the criteria for assessing the validity of a priority claim were set out in G 2/98. These criteria corresponded to the "gold" standard for assessing any amendment, no matter whether or not it included intermediate generalisations, for its compliance with Art. 123(2) EPC. Point 4 of the Reasons of G 2/98, referred to by the appellant, did not imply any different criterion in the assessment of added subject-matter and the validity of a priority claim either. The relevant passage read: "It follows that priority for a claim, i.e. an 'element of the invention' within the meaning of Article 4H of the Paris Convention, 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 in the form of an embodiment or example specified in the description of the application whose priority is claimed, and that priority for the claim can be refused, if there is no such disclosure." In the board's opinion, this passage was in line with and did not go beyond the order of G 2/98, as it stated that, for a priority claim to be valid, a specific disclosure, be it explicit or implicit, had to be present in the application from which the priority was claimed. The term "deutlich" in the German version of the decision, which is a translation of the term "specifically" in the English version, did not imply that only a clear claim may enjoy a priority claim. The term qualified the disclosure in the application from which priority was claimed. This disclosure should be specific ("deutlich") in the sense that the subject-matter for which priority was claimed was to be derived from the disclosure in a direct and unambiguous way. Whether this subject-matter as such was unclear was not decisive as long as the same (unclear) subject-matter was directly and unambiguously disclosed in the application from which priority was claimed. In view of Art. 88(4) EPC, it was 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 priority was claimed. In the passage in point 4 of the Reasons of G 2/98, these items, as derived from the expression "in particular", were simply listed as exemplary parts of the application documents. The board concluded that the priority for the subject-matter of claims 1 and 7 of the main request was valid for the same reasons as the ones set out with respect to added subject-matter.