T 1762/21 - On Art. 88(4) EPC

Key points

•  The proprietor argued that Paragraphs [0007], [0010], [0020] to [0023], [0026] to [0032], [0048], [0051], [0052], [0054], [0060], [0063] and [0064] of the priority application provided a basis for the subject-matter of claims 1 and 7 of the main request, so priority was valid.
• "Point 4 of the Reasons of G 2/98 referred to by the appellant [opponent] does not imply any different criterion in the assessment of added subject-matter and the validity of a priority claim [than the headnote of G2/98]. The relevant passage reads: "It follows that priority for a claim, i.e. an 'element of the invention' within the meaning of Article 4H of the Paris Convention, is to be acknowledged, if the subject-matter of the claim is specifically disclosed be it explicitly or implicitly in the application documents relating to the disclosure, in particular, in the form of a claim or in the form of an embodiment or example specified in the description of the application whose priority is claimed, and that priority for the claim can be refused, if there is no such disclosure."
• "This passage is in line with and does not go beyond the order of G 2/98, as it states that, in order for a priority claim to be valid, a specific disclosure, be it explicit or implicit, has to be present in the application from which the priority is claimed. The term "deutlich" in the German version of the decision [and in Art.88(4) EPC, see below], which is a translation of the term "specifically" in the English version, does not imply that only a clear claim may enjoy a priority claim. The term qualifies the disclosure in the application from which priority is claimed. This disclosure should be specific ("deutlich") in the sense that the subject-matter for which priority is claimed is to be derived from the disclosure in a direct and unambiguous way."
• "Whether this subject-matter as such is unclear is not decisive as long as the same (unclear) subject-matter is directly and unambiguously disclosed in the application from which priority is claimed. In view of Article 88(4) EPC, it is not required that this subject-matter be disclosed in the form of a claim or in the form of an embodiment or example specified in the description of the application from which priority is claimed. In the passage in point 4 of the Reasons of G 2/98, these items, as derived from the expression "in particular", are simply listed as exemplary parts of the application documents."
• Article 88(4) EPC reads: "If certain elements of the invention for which priority is claimed do not appear among the claims formulated in the previous application, priority may nonetheless be granted, provided that the documents of the previous application as a whole specifically disclose / deutlich offenbart / révèle d'une façon précise such elements. "

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t211762eu1

3. Validity of the priority claim

3.1 Despite the appellant's arguments, the same considerations apply to assessment of the priority claim as to added subject-matter.

The disclosure of the description and the drawings of the priority document are identical to those of the application as filed. The priority document differs from the application as filed only in that it does not contain any claims. However, the claims of the application as filed are not required in order to provide a basis for claims 1 and 7 of the main request, as shown in the above explanation.

3.2 As the appellant argued, the criteria for assessing the validity of a priority claim were set out in G 2/98, the conclusion reading:

"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."

These criteria correspond to the "gold" standard for assessing any amendment, no matter whether or not it includes intermediate generalisations, for its compliance with Article 123(2) EPC, as set out in point 2.4 above.

Point 4 of the Reasons of G 2/98 referred to by the appellant does not imply any different criterion in the assessment of added subject-matter and the validity of a priority claim either. The relevant passage reads:

"It follows that priority for a claim, i.e. an 'element of the invention' within the meaning of Article 4H of the Paris Convention, is to be acknowledged, if the subject-matter of the claim is specifically disclosed be it explicitly or implicitly in the application documents relating to the disclosure, in particular, in the form of a claim or in the form of an embodiment or example specified in the description of the application whose priority is claimed, and that priority for the claim can be refused, if there is no such disclosure."

This passage is in line with and does not go beyond the order of G 2/98, as it states that, in order for a priority claim to be valid, a specific disclosure, be it explicit or implicit, has to be present in the application from which the priority is claimed. The term "deutlich" in the German version of the decision, which is a translation of the term "specifically" in the English version, does not imply that only a clear claim may enjoy a priority claim. The term qualifies the disclosure in the application from which priority is claimed. This disclosure should be specific ("deutlich") in the sense that the subject-matter for which priority is claimed is to be derived from the disclosure in a direct and unambiguous way. Whether this subject-matter as such is unclear is not decisive as long as the same (unclear) subject-matter is directly and unambiguously disclosed in the application from which priority is claimed. In view of Article 88(4) EPC, it is not required that this subject-matter be disclosed in the form of a claim or in the form of an embodiment or example specified in the description of the application from which priority is claimed. In the passage in point 4 of the Reasons of G 2/98, these items, as derived from the expression "in particular", are simply listed as exemplary parts of the application documents.

Finally, whether the common general knowledge of the person skilled in the art may change in the time between the filing of a priority application and of the original application is of no relevance in the current case. The appellant has not pointed to any relevant effect on the disclosures of these applications of such a potential change and the Board does not see any either.

In conclusion, the appellant's objections against the validity of the priority for the subject-matter of claims 1 and 7 of the main request (Article 87(1) EPC) are not convincing. The priority for these claims is to be acknowledged for the same reasons as the ones set out with respect to added subject-matter in points 2.1 to 2.7 above. The appellant did not provide further reasons why the remaining claims might not enjoy the priority. The Board does not see any either. Hence, the priority is considered valid for all the claims of the main request.

3.3 These conclusions provide a sufficient answer to the questions which the appellant proposed to refer to the Enlarged Board of Appeal for a decision to be reached in the current case on the basis of the EPC and of consistent case law. Hence, no decision on these questions is required by the Enlarged Board of Appeal. Consequently, the request for referral is rejected (Article 112(1)(a) EPC).