T 0493/23 - Partial priority and intermediate generalisation

Key points

• The priority application discloses a widget with feature X, and a widget with features X, Y and Z. The patent is filed and granted with claim 1 directed to the widget with X+Y. Is the priority partially valid?
• This decision suggests not, incorrectly, it seems to me.
• The Board: " In a further line of argument, the [proprietor] submitted that claim 1 enjoyed partial priority for those threaded connections where the widths were the same in the varying-thread-width portions. Decision G 1/15 was mentioned in this context. "
• "The board is not persuaded. The Enlarged Board of Appeal ruled in decision G 1/15 that, under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document."
• " [1] However, in the present case, claim 1 does not contain any generic expression that can be understood to encompass alternative subject-matter. [2] In fact, none of the features of claim 1 of the twelfth auxiliary request brings the width of the female thread-grooves in connection with that of the male thread-ridges, or the width of the male thread-grooves with that of the female thread-ridges, in the varying-thread-width portions. [3] Therefore, claim 1 is not a generic "OR" claim in the sense of decision G 1/15." (numbers added)
• As a comment, the Board in sentence [1] does not engage with the "or otherwise" in the headnote of G1/15. 
• I don't fully understand sentence [2], and it is not clear to me if it aims to engage with the "or otherwise" part of the holding of G1/15. The priority application contained the embodiment and the claim encompassed the embodiment (something with ridges). 
• The third sentence is a conclusion only.
• The claim is held to be not novel over D5 of the same applicants. D5 is Art.54(3) prior art claiming priority of JP2016181175A, the present application claims priority of JP20160181176, filed on the same date. I did not check, but I suppose the disclosure is identical in the relevant parts between those two documents. 
  
• The problem is that this approach opens the door to zombie poisonous priority (and toxic divisionals) - precisely where G 1/15 had firmly shut the coffin. 
• To cite G 1/22, point 54 of the reasons: "the Rules of the Paris Convention and the self-contained priority system of the EPC should be construed in a manner which ensures that the above-mentioned general purpose is fulfilled as far as possible (T 15/01, Reasons, point 34, confirmed in T 5/05, Reasons, point 4.4; see also Straus, The Right to Priority in Article 4A(1) of the Paris Convention and Article 87(1) of the European Patent Convention, JIPLP 2019, 687, 688/689)." viz. "The basic purpose of the right of priority is to safeguard, for a limited period, the interests of patent applicants in their endeavour to obtain international protection for their inventions, thereby alleviating the negative consequences of the principle of territoriality in patent law (T 15/01, OJ EPO 2006, 153, Reasons, point 32, with references to the relevant literature). The priority provisions contained in the Paris Convention should not be regarded as a body of exception clauses which should be interpreted strictly (see in this respect T 998/99, OJ EPO 2005, 229, Reasons, point 3.1; see also T 1201/14, Reasons, point 3.2.1.3). "
• Comments from readers are welcome!
• 
  

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t230493eu1