Résumé de EPC2000 Art 087(1) pour la décision T1946/21 du 05.05.2023

See also abstract under Article 116 EPC. In T 1946/21 the appellant (opponent) and the intervener argued that the right to priority had not been validly transferred to the respondent (patent proprietor) because the written agreement had only been signed on the filing date of the subsequent application. As the smallest time unit under the EPC was a day, an assignment on the day of the filing of the subsequent application was insufficient. Moreover, claim 1 as granted did not correspond to a "generic 'OR'-claim" within the meaning of G 1/15 and no partial priority could be acknowledged. Therefore, the respondent was not entitled to claim priority from D29, which became novelty destroying. The board held that it was sufficient for the applicant or patent proprietor to demonstrate that the assignment of the priority right was effective before the actual filing of the subsequent application. The law did not set forth any other condition. In particular, the assignment need not be effective before the filing date of the subsequent application. This was the case for the person who was "successor in title" either of the patent application including the right to priority or of only the right to priority. There was also no reason to read such a requirement into the law. Doing so would lead to a situation where a successor in title who had obtained the right to priority on a certain day by way of an assignment always had to wait for the next day to file the subsequent application to enjoy its right to priority. Moreover, in that situation, no one would be able to enjoy the right to priority for a certain amount of time. It would also mean that even though the applicant of the subsequent application had already obtained the right to priority and was in fact already the successor in title, it could not make use of the full 12-month period under Art. 87(1) EPC. According to the board, at least for the EPC, there was no general rule that the smallest time unit was a day. The smallest time unit was a day when it came to calculating and computing time periods (see R. 131(1) EPC) and was applicable for example when calculating the 12-month period laid down in Art. 87(1) EPC. There was, however, no reason why this should be generally applicable to other situations, in particular for the determination of the requirement of "successor in title". The appellant and the intervener had also relied on the principle of legitimate expectation, in particular because the Guidelines A-III,°6.1 had consistently referred to the requirement "before the filing date". The board pointed out that what the law requires from applicants for them to enjoy a right to priority cannot be determined by what is stated in the Guidelines, either directly or indirectly by way of creating a legitimate expectation. Taking into account the evidence on file, the board found that the respondent had indeed demonstrated that the contracts regarding the transfer of the right to priority had been validly concluded when it filed the subsequent application. This was not contested by the other parties. Thus, the then applicant was indeed the "successor in title" who enjoyed the right to priority within the meaning of Art. 87(1) EPC. On whether partial priority could be acknowledged, the board pointed out that the fact that very many alternatives could be identified was not a reason for denying that there was a generic "OR"-claim or, more generally, for not applying the findings in G 1/15. The appellant's and the intervener's argument essentially relied on the requirement of a "limited number of clearly defined alternatives" taken from G 2/98. However, this (additional) requirement for acknowledging partial priority was explicitly rejected by the Enlarged Board in G 1/15. The Enlarged Board acknowledged in G 1/15 that the task of determining the relevant disclosure of the priority document taken as a whole, and determining whether that subject-matter was encompassed by the claim in the subsequent application could generally be a demanding intellectual exercise but was common practice at the EPO and among practitioners of the European patent system. This exercise was, moreover, not difficult in the case in hand, in which the priority document itself was the allegedly novelty-destroying disclosure. In this situation, the (partial) priority of the claim based on this priority document was valid for every potentially novelty-destroying element disclosed in this very same priority document. Thus, the subject-matter of claim 1 (in its entirety) was novel over D29 since the claim enjoyed partial priority from that document for all the encompassed matter disclosed in it.