T 2462/10 - Priority and the BVI

Key points

• In connection with the validity of the priority of a Euro-PCT application E1 as Article 54(3) EPC prior right  the patentee noted that the applicant  for E1 was a company having a place of business in the British Virgin Islands, with the US inventor as applicant for the US only. He raised the question whether "Art. 4 of the Paris Convention grant[s] the right to priority to nationals of non-member states?" The Board does not needs to answer these questions, because the claims were found to lack inventive step over E2. 
• It was not disputed that the BVI were not a member of the Paris Convention, PCT or WTO. The patentee argues that " any person" in Art. 4 A (1) PC must be read as " any national of a PC state, and non-nationals qualifying under Art. 3 PC" . This is supported by the WIPO handbook, " 5.22 The beneficiary of the right of priority is any person entitled to benefit from the national treatment rule who has duly filed ..." Bodenhausen and Wieczorek give the same explanation, and for the Madrid system of priority for trademarks it was said to be the same.
• Agreeing that the BVI applicant can not invoke priority based on the PC and PCT, the question is whether the validity of priority for purpose of Article 54(3) EPC is to be assessed under Article 87 EPC or the basis of Art. 8 PCT in connection with Art. 4 PC. Moreover, it can be questioned whether the applicant for the later application is relevant, or the fact that the applicant for the priority founding patent application (with the German patent office) was only the BVI company. 
• The attorney raising the issue was Dr. rer. nat. Dr. jur. Philipp Harlfinger. 

T 2462/10 -  link 

Summary of Facts and Submissions

I. This is an appeal by the patent proprietor against the decision of the opposition division revoking European patent No. 1 359 757.

II. Opposition had been filed against the patent as a whole, based on Article 100(a) EPC (novelty and inventive step).

During the proceedings before the opposition division the opponent had relied inter alia on the following documents:

E1: WO 97/22207 A1,
E2: DE 44 27 046 A1 and

E6: S. Breide, "Interaktives Fernsehen - Service on Demand (SoD)", FERNSEH- UND KINO-TECHNIK, 49. Jahrgang, Nr. 3/1995, pages 93 to 103.

III. In the decision under appeal, the opposition division held that:

- the priority of document E1 was validly claimed and thus document E1 was prior art under Article 54(3) EPC;

- the subject-matter of independent claims 1 and 7 of the patent as granted was not novel in view of each of prior-art documents E1 and E2; and

- the subject-matter of independent claims 1 and 7 of auxiliary requests 1 and 2 lacked novelty in view of prior-art document E1.

IV. With the statement of grounds of appeal the appellant (patent proprietor) filed amended claims according to auxiliary requests 1 to 3, which replaced the claims of auxiliary requests 1 and 2 underlying the decision under appeal, and requested that the decision under appeal be set aside and the patent be maintained as granted or in amended form on the basis of the auxiliary requests. The appellant also requested that, if the board considered the priority of document E1 to be valid, the matter be referred to the Enlarged Board of Appeal under Article 112(1)(a) EPC. Oral proceedings were requested as a precaution.

V. The respondent (opponent) requested that the appeal be dismissed. Oral proceedings were also requested as a precaution.

VI. The board summoned the parties to oral proceedings and in a communication under Article 15(1) RPBA (Rules of Procedure of the Boards of Appeal of the EPO, OJ EPO 2007, 536) informed them that they should be prepared to discuss at the oral proceedings inter alia novelty of the claimed subject-matter in view of document E2 and inventive step in view of documents E2 to E6.

VII. [] The appellant also requested that the following questions, filed with letter dated 4 March 2016, be referred to the Enlarged Board of Appeal according to Article 112(1)(a) EPC:

"1. Does the validity of a priority claim of a Euro-PCT-application for the purpose of citing said application as state of the art according to Art. 54 (3) EPC have to be assessed on the basis of Art. 8 PCT in connection with Art. 4 of the Paris convention?

2. If question 1 is answered yes, does Art. 4 of the Paris Convention grant the right to priority to nationals of non-member states?

3. Depending on question 1, may the validity of priority claim of a Euro-PCT-application may be assessed on a different set of rules (especially either PCT or EPC rules) in proceedings directly pertaining to the Euro-PCT-application (e.g. examination and/or opposition proceedings for the Euro-PCT-application)?".

The respondent's final request at the end of the oral proceedings was that the appeal be dismissed.

Before closing the oral proceedings the chairwoman announced the board's decision.

Reasons for the Decision

Request for referral to the Enlarged Board of Appeal

18. The appellant requested that several questions be referred to the Enlarged Board of Appeal (see point VII above). These questions relate exclusively to the validity of the priority claimed for document E1 which was considered as novelty-destroying prior art under Article 54(3) EPC in the decision under appeal.

Under Article 112(1)(a) EPC 1973, a board of appeal, either of its own motion or upon request from a party, refers any questions of law to the Enlarged Board of Appeal in order to ensure uniform application of the law, or if an important point of law arises, if it considers that a decision is required for the above purposes.

As is clear from the foregoing reasoning (points 2 to 17 above), document E1 is not taken into account for assessing the patentability of the subject-matter of claim 1 of the appellant's main request and first and second auxiliary requests. Hence, the validity of the priority claimed for document E1 is not relevant for the board's decision.

Consequently, the board does not see any necessity to refer the appellants' questions to the Enlarged Board of Appeal and the appellant's request must therefore be refused.

Order

For these reasons it is decided that:

1. The request for a referral to the Enlarged Board of Appeal is refused.

2. The appeal is dismissed.