2.4.2
Applicability of Article 54(3) EPC in cases of potentially colliding European parent and divisional applications

In T 1496/11 the board found that the subject-matter of claim 1 of the parent application was only entitled to the filing date of 8 October 1997. The divisional application of the patent in suit disclosed an embodiment identical to that provided in the priority document. This embodiment of the divisional application was therefore entitled to the claimed priority date of 10 October 1996 and thereby anticipated the subject-matter of claim 1, which was only entitled to the filing date of 8 October 1997. Hence, the subject-matter of claim 1 of the parent application lacked novelty with respect to the divisional application under Art. 54(3) EPC.

In T 557/13 several questions concerning partial priorities were referred to the Enlarged Board of Appeal, see in particular question 1 and 5: 1. Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic "OR"-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document? 5. If an affirmative answer is given to question 1, may subject-matter disclosed in a parent or divisional application of a European patent application be cited as state of the art under Art. 54(3) EPC against subject-matter disclosed in the priority document and encompassed as an alternative in a generic "OR"-claim of the said European patent application or of the patent granted thereon? See Chapter II.D.5.3 "Multiple priorities for one claim".

Quick Navigation