T 0050/10 - Priority and sequences

Key point

• The Board confirms that disclosure of a DNA sequence (with indication of the open reading frame ORF) can provide priority for a claim for the (corresponding) amino acid sequence.
• The opponent had submitted that "The single disclosure of an ORF at one single position in the priority document, in contradiction to the remaining disclosure of the whole document, could not be regarded as a direct and unambiguous disclosure." The Board does not comment specifically on this argument.

EPO T 50/10 - link

Reasons for the Decision

[...] Article 87 EPC - Priority right

9. There is a dispute between the parties about whether the subject-matter of claim 1 can validly claim a right of priority from the earlier application US 60/073 763 filed on 5 February 1998.

10. According to Article 87 EPC a European patent application may validly claim the right of priority from a previous first application if both relate to "the same invention". The concept of "the same invention" expressed in Article 87 EPC has been interpreted by the Enlarged Board of Appeal in decision G 2/98 (OJ EPO 2001, 413, point 9 of the reasons) as meaning subject-matter which the person skilled in the art can derive directly and unambiguously, using common general knowledge, from the previous application as a whole.

11. In the present case, the issue is thus whether the 655 amino acid polypeptide having the sequence of SEQ ID NO: 1, that is the subject-matter of claim 1, can be directly and unambiguously derived from application US 60/073 763.

12. The board notes that the application US 60/073 763 does not contain a discrete sequence identical to SEQ ID NO: 1 of the patent. However in Example 6 there is a disclosure of a "cDNA insert [...] 2418 bp in length as in Figure 2C or SEQ ID NO: 2 [with] a long ORF that began at position 239 and ended with the stop codon TAA at position 2204-06." (see page 21, lines 17 to 22). Translation of this ORF yields a protein of 655 amino acids which is identical to SEQ ID NO: 1 as mentioned in the patent - it being part of the basic technical knowledge of the skilled person that translation of a nucleic acid sequence into the corresponding amino acid leads to a defined amino acid sequence. Furthermore, the translated amino acid sequence of this region is included in the longer sequence shown in Figure 2A of the priority application. Thus, the board is satisfied that, given the information about the positions of the start and stop codons of the ORF concerned, the skilled person can derive the polypeptide having SEQ ID NO: 1 as claimed, directly and unambiguously, using common general knowledge, from application US 60/073 763 as a whole.

13. It follows from this that the subject-matter of claim 1 and of the dependent claims 2 to 8 and 10 to 16 validly claims the priority date from application US 60/073763, this date being 5 February 1998.

14. Since documents D3 to D5 are all published after that date, all objections of lack of novelty and lack of inventive step made on the basis of these documents must fail.

15. Hence, the board is satisfied that the requirements of Articles 54 and 56 EPC are fulfilled.