T 2407/19 - Sole substantive condition priority

Key points

•  "As established by the Enlarged Board of Appeal in its opinion G 2/98 (OJ EPO 2001, 413) and confirmed in its decision G 1/15 (OJ EPO 2017, 82), the sole substantive condition laid down by the EPC (and the Paris Convention) for the right of priority to be validly claimed is that the priority document and the subsequent filing are directed to the same invention (Article 87(1) EPC). Article 4C(4) of the Paris Convention mentions "the same subject". However, the meaning is identical (see G 1/15, point 4.2 of the Reasons)."
• "The requirement for claiming priority of "the same invention", referred to in Article 87(1) EPC, means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole (see G 2/98, Conclusion of the Opinion).

  Moreover, the "same invention" must be disclosed in an enabling manner in the priority document (see G 1/15, Order of the decision)."

• As a first comment, an open question is how this case law relates to the plausibility/technical teaching requirement of G2/21.

• A second question is whether this means, under T1482/21, that the Opposition Division is not competent to review the decision of the Examining Division that the priority claim of the granted application is valid as far as the formal issue of entitlement is concerned (G 1/22).

• 
  
• 
  
• EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/en/boards-of-appeal/decisions/t192407eu1

1. The appeal is admissible.

Main request and auxiliary request 1 - entitlement to the earlier claimed priority (Article 87(1) EPC)

2. As established by the Enlarged Board of Appeal in its opinion G 2/98 (OJ EPO 2001, 413) and confirmed in its decision G 1/15 (OJ EPO 2017, 82), the sole substantive condition laid down by the EPC (and the Paris Convention) for the right of priority to be validly claimed is that the priority document and the subsequent filing are directed to the same invention (Article 87(1) EPC). Article 4C(4) of the Paris Convention mentions "the same subject". However, the meaning is identical (see G 1/15, point 4.2 of the Reasons).

The requirement for claiming priority of "the same invention", referred to in Article 87(1) EPC, means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole (see G 2/98, Conclusion of the Opinion).

Moreover, the "same invention" must be disclosed in an enabling manner in the priority document (see G 1/15, Order of the decision).