T 2301/12 - Post 2 - A83 or A84; and late translation of prio doc

Key points

• This second post deals with the insufficiency attack, an attack based on an Article 54(3) document that was shown to critically lack priority in appeal, and the remittal of the case because of a late challenge to the priority of the patent. 
• Regarding the insufficiency attack: "The question would arise whether this would justify an objection of insufficiency of disclosure under Article 100(b) EPC 1973 or an objection that the claims are not supported by the description under Article 84 EPC 1973. The Board accepts that the distinction is often rather subtle, and the matter has to be judged having regard to the facts of the particular case in question." 
• "The [opponent's] argument is effectively that claim 1 has been drafted in such a way that it does not reflect, indeed that it excludes, the teaching of the description and drawings. In the Board's view, this objection, which is chiefly focused on the way in which the invention has been presented in the claims, must be seen as an objection that the claims are not supported by the description within the meaning of Article 84 EPC 1973, rather than an objection that the invention is insufficiently disclosed." 
• The Board distinguishes the case from T 409/91, because therein the most preferred particle sizes (according to the patent) could not in fact be achieved. The present objection is against embodiments which fall in a literal sense within the scope of claim 1 but for which "it would be perfectly clear to the skilled person that this is not what the invention is about". The Board considers T 1018/05 more relevant, wherein "values of the parameter not obtainable in practice would not be regarded by the skilled person as being covered by the claims and thus could not justify an objection of insufficiency of disclosure".
• Then the novelty attack. The OD had considered the claims not novel over K4, an Article 54(3) citation. In appeal, patentee submits a translation of the priority document of K4, showing that the priority document lacks the critical feature. Hence, the novelty destroying embodiment of K4 lacks priority and can not be cited.
• Opponent disputed admissibility of the translated priority document K4PT in appeal. The Board: "it must be borne in mind that it was the opponent which introduced document K4 into the proceedings together with the argument that the embodiment comprising the water leakage sensor constituted prior art under Article 54(3) EPC. Whilst it is regrettable that the documents K4P/K4PT were not filed in the proceedings before the Opposition Division, the responsibility in this case does not only fall on the proprietor; it is also incumbent on an opponent asserting that a document constitutes novelty-destroying prior art under Article 54(3) EPC to ascertain and accurately present the full facts in this respect." 
• However, then the opponent made an attack to priority of the patent. "In the oral proceedings [before the Board], the opponent asserted for the first time that document K24 - cited by the opponent during the appeal procedure - represented the "first application" within the meaning of Article 87(1) EPC, and that consequently the priority claim of the opposed patent is invalid." The Board then remits the case, also for a decision about the admissibility of K24, and for the OD to consider whether the validity of the priority of the patent is relevant at all. 

EPO T 2301/12 - link

8. Third auxiliary request: Article 100(b) EPC

8.1 The exposure apparatus of claim 1 of the third auxiliary request comprises:

"a detecting device arranged to detect whether there is a liquid on and in contact with the upper surface of the base member".

8.2 The first argument of the opponent is that this wording (present tense: "whether there is a liquid") defines a detecting device with the capability of determining, at any instant of time, whether liquid is present on the surface or not, i.e. it effectively defines real time detection. Furthermore, "whether there is a liquid" defines the capability of determining whether liquid in any amount is present on the surface.

It is not disputed that numerous configurations of an exposure apparatus having a liquid detecting device are disclosed in the description and drawings in a way which would allow the skilled person to put them into practice. The argument of the opponent is that the wording of claim 1 means that only arrangements which are capable of real time detection and the detection of very small amounts of liquid are claimed, whereas none of the arrangements disclosed in the description and drawings would be capable of either of these types of detection. The invention as defined in claim 1 is therefore insufficiently disclosed.

T 2301/12 - Post 1 - Inadmissible or not allowable

Key points

• In this opposition appeal, the Board has firstly to decide (under Article 12(4) RPBA) on whether to admit requests withdrawn during the first instance proceedings. Patentee initially disputes that he had withdrawn the requests, but is bound by the (non-challenged) minutes that the new requests  (including new Main Request) "replaced" the initial requests during the oral proceedings before the OD, such that these initial requests were in fact withdrawn. The Board observes that "where a proprietor files multiple requests, there must be a single main request, and it must be apparent at every stage of the proceedings which request this is." 
• However, the OD had (before the withdrawal) indicated that the initial main request did not meet Article 123(2) EPC and was "therefore was not admitted into the proceedings". The Board explains that "The finding of the Opposition Division that the initial main request did not meet the requirements of Article 123(2) EPC should therefore have led to a decision that the patent could not be maintained according to this request. Failure to meet the requirements of Article 123(2) EPC does not - by itself - render a request inadmissible, and the decision not to admit the initial main request into the proceedings therefore required a separate legal basis." Accordingly, the decision to not admit the requests is "flawed" (the request should have been admitted and rejected). 
• The OD also misapplied Rule 80 for a further not admitted request. That request was not admitted, because the OD considered the claim cancelled therein to meet the requirements of Article 123(2) EPC. "This does not correspond to the Board's understanding of the functioning of Rule 80 EPC." "If an opponent objects to a request on the grounds that one or more dependent claims fail to meet the requirements of Article 123(2) EPC, the filing of an amended set of claims in which these claims are deleted is certainly "occasioned by a ground for opposition", and the requirements of Rule 80 EPC are met. For the purposes of applying Rule 80 EPC, whether subsequent examination confirms the opponent's objections under Article 123(2) EPC or not (a judgement which could, in any event, be overturned on appeal) is [irrelevant]"
• In these circumstance, the patentee is not bound by the withdrawal of the requests during the oral proceedings before the OD, and the request are admitted in appeal. 

EPO T 2301/12 - link

Reasons for the Decision

1. The appeal is admissible.

2. Admissibility of the main request

2.1 For convenience of reference, the main request and the seven auxiliary requests which were on file at the start of the oral proceedings before the Opposition Division will be referred to as the proprietor's "initial requests".

2.2 According to Article 12(4) RPBA the Board has the power to hold inadmissible requests which could have been presented, or which were not admitted, in the first instance proceedings.

2.3 The current main request is identical to the initial main request, which was not admitted into the proceedings. The opponent argues that, regardless of whether this decision of the Opposition Division was correct, the initial main request was subsequently withdrawn (as were all of the initial requests). It was therefore not presented for a decision by the Opposition Division, and the Board should use its discretion under Article 12(4) RPBA not to admit it into the proceedings at this stage. The proprietor denies that it was ever withdrawn. The first issue to decide is therefore whether the initial requests were in fact withdrawn.

2.4 The accuracy of the minutes of the oral proceedings has never been challenged, and the Board starts from the position that they represent a faithful account of events.

According to the minutes, the Opposition Division decided not to admit any of the initial requests, and the oral proceedings were interrupted "to allow the proprietor to prepare an admissible request". The proprietor subsequently "filed a new main request and auxiliary requests 1-3 ... to replace the [initial] main request and auxiliary requests 1-3 ... Auxiliary requests 4-7 ... were withdrawn" (page 2, third paragraph).

The use of the word "replace" clearly implies that the initial main request was no longer the current main request, and since there was no attempt to retain it as a new auxiliary request either, it is difficult to avoid the conclusion that it was simply withdrawn.

2.5 The new requests were annexed to the minutes and the first of them is clearly entitled "MAIN REQUEST". The Board does not accept the argument that the titles of requests should be considered mere labels for identification. Where a proprietor files multiple requests, there must be a single main request, and it must be apparent at every stage of the proceedings which request this is. One reason why this is essential is that where the main request is not allowed, the proprietor is adversely affected by the decision, and may appeal pursuant to Article 107 EPC, whereas this would not normally be the case if the main request is allowed.

The Board therefore takes the view that filing a new main request "to replace" the initial main request constitutes withdrawal of the initial main request.

2.6 The opponent points out correctly that cases exist in which the boards have used their discretion under Rule 12(4) RPBA to refuse to admit a request in appeal proceedings on the grounds that it had been withdrawn before the department of first instance. However, this remains a matter of discretion to be exercised on a case by case basis.

In the present case the communication annexed to the summons to oral proceedings included the provisional opinion of the Opposition Division that claims 21 and 22 of the granted patent failed to meet the requirements of Article 123(2) EPC and that the subject-matter of claim 1 was not new. In response, the proprietor filed new requests ("the initial requests") one month prior to the oral proceedings, thus respecting the time limit set by the Opposition Division pursuant to Rule 116 EPC. That the initial requests were an attempt to address the above objections has not been disputed.

It was therefore not unreasonable for the proprietor to assume that these requests would be the focus of the substantive discussions at the oral proceedings. In fact, the proprietor was confronted at oral proceedings by the decision of the Opposition Division not to admit any of the initial requests. While the opponent is correct in saying that the proprietor had options available other than withdrawing the initial requests, for example, filing new auxiliary requests, the Board accepts that the proprietor had been put into the uncomfortable position of having to decide - during the oral proceedings - how to react to an unexpected turn of events.

2.7 It is for this reason that the Board considers that the correctness - or otherwise - of the Opposition Division's decision is a factor to be considered in the present case. If the Opposition Division was justified in deciding not to admit the initial requests, then the predicament in which the proprietor found itself at oral proceedings was a result of the proprietor's own actions in filing inadmissible requests. If the decision of the Opposition Division was wrong, then the proprietor arguably should not be penalised for making an inappropriate choice, under pressure, in response to an incorrect decision of the Opposition Division.

2.8 In relation to the main request, the Opposition Division decided, according to the minutes of the oral proceedings, two things: firstly that the initial main request did not meet a requirement of the EPC (namely, Article 123(2) EPC), and secondly that it "therefore was not admitted into the proceedings".

2.9 According to Article 101(3)(a) EPC, if the Opposition Division is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during the opposition proceedings, the patent and the invention to which it relates meet the requirements of the EPC, it shall decide to maintain the patent as amended, provided that the conditions laid down in the Implementing Regulations are fulfilled.

Conversely, the consequence of an amended request being judged not to meet the requirements of the EPC is that the Opposition Division shall decide that the patent cannot be maintained according to this request. The finding of the Opposition Division that the initial main request did not meet the requirements of Article 123(2) EPC should therefore have led to a decision that the patent could not be maintained according to this request.

Failure to meet the requirements of Article 123(2) EPC does not - by itself - render a request inadmissible, and the decision not to admit the initial main request into the proceedings therefore required a separate legal basis. No such basis was cited, and in the present case it is not apparent to the Board which provision of the EPC could have been cited as grounds for refusing to admit the initial main request.

The decision not to admit the initial main request into the proceedings was therefore flawed, and the same applies to the initial first to third auxiliary requests, which were not admitted for the same reasons.

2.10 The fourth to seventh auxiliary requests were not admitted for failure to meet the requirements of Rule 80 EPC.

Both claim 21 and claim 22 of the granted patent had been attacked by the opponent for failure to meet the requirements of Article 123(2) EPC, and the Opposition Division provisionally agreed with this conclusion in the communication annexed to the summons to oral proceedings. In response, both claims were deleted from the initial fourth to seventh auxiliary requests.

Subsequently, at the oral proceedings, the Opposition Division came to the conclusion that claim 21 did not meet the requirements of Article 123(2) EPC, but that claim 22 did. As a result, the fourth to seventh auxiliary requests were not admitted, since "deletion of claim 22 was not occasioned by a ground for opposition" contrary to the requirements of Rule 80 EPC.

2.11 This does not correspond to the Board's understanding of the functioning of Rule 80 EPC. If an opponent objects to a request on the grounds that one or more dependent claims fail to meet the requirements of Article 123(2) EPC, the filing of an amended set of claims in which these claims are deleted is certainly "occasioned by a ground for opposition", and the requirements of Rule 80 EPC are met.

For the purposes of applying Rule 80 EPC, whether subsequent examination confirms the opponent's objections under Article 123(2) EPC or not (a judgement which could, in any event, be overturned on appeal) is neither here nor there.

2.12 The Board therefore concludes that for the initial main request, and for each of the initial first to seventh auxiliary requests, the decision not to admit these requests into the procedure was not justified according to the EPC.

2.13 The Board fully accepts that it is necessary to consider the interests of both parties, and that the argument that it is unfair on the opponent to readmit requests which were previously withdrawn has merit. However, in the opinion of the Board, this is outweighed in the present case by the unfairness of penalising the proprietor for withdrawing the main request in response to an incorrect decision of a department of the EPO.

2.14 The opponent also raised the objection that the amendment to claim 1 of the main request did not comply with the requirements of Rule 80 EPC. The Board does not agree. In the notice of opposition (point 7.2.2.3) the subject-matter of claim 1 was was alleged to lack novelty based on an argument that "on" in claim 1 did not necessarily imply "in contact with". This interpretation was provisionally endorsed by the Opposition Division (point 4.2 of the annex to the summons to oral proceedings). The amendment to "on and in contact with" is a clear response to this objection and therefore complies with Rule 80 EPC. For the purposes of applying Rule 80 EPC, it is immaterial whether the opponent's novelty argument was valid or not, or if valid, whether the proprietor's response actually succeeds in overcoming it.

2.15 The main request is therefore admitted into the proceedings.

[...]

3.6 The amendments to claims 21 and 22 are therefore found to contravene the requirements of Article 123(2) EPC, and consequently the patent cannot be maintained according to the main request according to Article 101(3)(a) EPC.

5. Admissibility of the 3rd auxiliary request

5.1 The third auxiliary request corresponds to the initial fourth auxiliary request. In the minutes of the oral proceedings it is explicitly stated that this request was "withdrawn". However, for the reasons given above in connection with the main request, this is not seen as a bar to admission into the proceedings in the present case. In addition, the Board has already given its reasons why this subject-matter is considered to comply with the requirements of Rule 80 EPC (see points 2.10 to 2.12, above).

5.2 The third auxiliary request is therefore admitted into the proceedings.

6. Third auxiliary request: Article 123(2) EPC

The Board has found that claim 1 of the main request meets the requirements of Article 123(2) EPC, but that claims 21 and 22 do not. The third auxiliary request corresponds to the main request, but with the said claims 21 and 22 deleted, and it therefore meets the requirements of Article 123(2) EPC.

T 0106/13 - Not submitting the article

Key points

• In this opposition appeal, the appealing opponent argued that the claims were not novel over D1 (published in 1985) read with common general knowledge of 2005 (the filing date of the opposed patent), as evidenced by N1. N1 is an article on a website, but only the abstract and URL was submitted by the opponent. The opponent explained that it had refrained from filing the complete article due to copyright issues. The article was easily accessible for the EPO, according to opponent (a large company represented by an employee). 
• The Board does not accept this. " Die Beschwerdeführerin hat von der Vorlage des gesamten Artikels abgesehen, da die ihrer Meinung nach damit verbundene Aufnahme des Artikels in den öffentlichen Teil der Beschwerdeakte ihr möglicherweise als Verletzung eines bestehenden Copyrights angelastet werden könnte. Dieser Grund ändert nichts an der Tatsache, dass der Artikel selbst nicht eingereicht wurde und daher keine Berücksichtigung im Verfahren finden konnte" 
• The Board also does  not accept that the missing feature of D1 is provided by N1. For novelty, a prior art document is to be read as on its publication date, according to established case law. 

EPO T 0106/13 -  link

X. Die Argumente der Beschwerdeführerin [opponent] lassen sich wie folgt zusammenfassen.

Anspruch 1 sei nicht neu gegenüber D1/N1. Der Fachmann lese das 1985 veröffentlichte Dokument D1 unter Berücksichtigung seines Fachwissens aus dem Jahr 2005, nämlich zum Zeitpunkt der dem Streitpatent zugrundeliegenden Anmeldung. Der Fachmann verstehe dann die in D1 nicht explizit genannten Merkmale, wie z.B. Abfangregelventile, in D1 als implizit offenbart, weil im Jahre 2005 in (fast) allen Dampfturbinenanlagen Zwischenüberhitzer und dazugehörige Abfangregelventile angeordnet seien.

N1 dokumentiere das allgemeine Fachwissen. Es sei rechtzeitig mit der Beschwerdebegründung genannt. Es sei klar identifiziert, so dass sein Inhalt der Beschwerdegegnerin und dem EPA zugänglich sei.

Entscheidungsgründe

2.2 In der Beschwerdebegründung hat die Beschwerdeführerin vorgetragen, dass der Gegenstand aller Ansprüche des Patents gegenüber D1 and N1 entweder nicht neu sei oder nicht auf erfinderischer Tätigkeit beruhe.

N1 wurde erstmals im Verfahren zusammen mit der Beschwerdebegründungvorgelegt.

Der Einwand mangelnder Neuheit gegenüber diesen Dokumenten wurde allerdings, wie auch von der Beschwerdeführerin in der mündlichen Verhandlung ausdrücklich zugestanden, in den Beschwerdegründen nicht substantiiert, sondern erst im Schreiben vom 4. November 2017 in Antwort auf die Kammermitteilung.

T 0330/14 - A kind of inescapable priority trap

Key points

• In this case, priority was claimed from US provisional, E10 which is identical to the application as filed. However, the applicant had filed a second US provisional E11, two day before E10, and forming the basis for Euro-PCT application E2. The content of the two priority documents is not exactly the same, but the applications are related. According to the opponent, either the present claims lack basis in the application as filed, or the claims have basis in the application as filed, and are then equally disclosed in E11, making E11 the "first application", the priority invalid and E2 a novelty destroying Article 54(3) prior right. 
• The Board recalls that " the Enlarged Board has stressed the importance of applying this "gold standard" as a uniform concept of disclosure with reference to Articles 54, 87 and 123 EPC". 
• The Board also states that it "has some sympathy with the [proprietor's] argument that a skilled person would not directly and unambiguously derive the subject-matter of claim 1 of the main request from E11 [because this involves a selection from three lists]. However, applying the gold standard to the disclosure of the application as filed the board comes to the conclusion that, as explained below, the subject-matter of claim 1 of the main request does not comply with Article 123(2) EPC" because it involves the selection of four features from the application as filed.

EPO T 0330/14 - link

III. The opposition division held that the subject-matter of claim 1 of the main request and the eleven auxiliary requests complied with Articles 123(2), 83 and 84 EPC.

Regarding Article 123(2) EPC, the opposition division found that the subject-matter of claim 1 of the main request and of all auxiliary requests was directly and unambiguously derivable from the application as filed, considered as a whole. Since the application as filed was identical to the priority document E10, the claimed subject-matter was directly and unambiguously derivable from E10 as well.

Reasons for the Decision

1. In the statement setting out the grounds of appeal, the appellant [patentee] argued that the method defined in claim 1 of the main request had been disclosed for the first time in E10 (the priority document of the patent in suit) and not in E11 (the priority document of E2). Therefore, the subject-matter of the claims of the main request could validly claim priority from E10, with the result that the relevant date for assessing novelty was 19 March 2004. Under those circumstances, E2 was not state of the art under Article 54 EPC.

T 1476/14 - Challenging witnesses

Key points

• The patentee appealed the decision revoking the patent. The OD had held a witness hearing about the alleged public prior use at a trade fair (of two witnesses), considering it proven and novelty destroying for the (then) main request. The patentee tries to challenge the witness hearing in appeal. The Board is not very open to the objections. The small inconsistencies between the testimonies of the two witnesses are not prejudicial. The fact that the witnesses had met with the representative of the opponent at the evening before the hearing, is neither prejudicial because the mere possibility of coordination of the testimonies is not sufficient. 
• The Board: "Wenn aber schon allein die bloße Möglichkeit einer vorherigen Abstimmung [between witnesses] genügte, um den Inhalt der späteren Aussagen zu disqualifizieren, könnte kaum je eine Zeugenaussage Berücksichtigung finden. Maßgeblich ist daher vielmehr, ob die Zeugenaussagen als solche einen konkreten Verdacht dafür liefern, dass die Zeugen sich zuvor untereinander abgestimmt haben." 
• Moreover, the patentee pointed out (in the appeal) an inconsistency in the earlier testimonies, but admitted that he had refrained from pointing it out during the witness hearing because the witnesses could then have adapted their testimony. The Board, in a rather German sentence: "Aus einem solchen eigenen Versäumnis kann die Beschwerdeführerin in der Beschwerdeinstanz jedoch schon zum einen deswegen nichts mehr für sich herleiten, weil sie sich insoweit freiwillig ihrer Rechte begeben hat, wohl auch weil sie mit einer derartigen Fragestellung sogar nach ihrem eigenen Verständnis eine Zeugenaussage herausgefordert hätte, die zu ihren eigenen Lasten gegangen wäre." 
• In addition, the Board does not admit a request (filed for the first time in appeal) with a feature that aims to provide novelty over the public prior use. In particular because this would necessitate a new witness hearing. 

EPO T 1476/14 -  link

Hauptantrag

2. Neuheit gegenüber der offenkundigen Vorbenutzung ANPIC

2.1 Von der Einspruchsabteilung wurde entschieden, dass der Gegenstand des Anspruchs 1 des Hauptantrags unter anderem im Lichte der Vorbenutzung "ANPIC" nicht neu sei. Bei dieser Entscheidung stützte sich die Einspruchsabteilung auf die während der mündlichen Verhandlung gemachten Zeugenaussagen der Herren Rodriguez Lee, Giorgianni und Fierro Rodriguez.

J 0007/81 - (Classic) Payment to bank account held by EPO

Key points

• By way of exception, today a post about an old decision: J 7/81. 
• Article 5(1) Rfees indicates that there are two methods of payment: " by payment or transfer to a bank account held by the Office" (next to those allowed under Article 5(2) Rfees, e.g. debit orders). 
• Article 7(3)(a) Rfees gives the rule that payment can be considered made in time if the payer " effected the payment through a banking establishment" before the end of the time limit (the other possibility is that the payer " duly gave an order to a banking establishment to transfer the amount of the payment" 
• Personally, I only use bank transfer (logging in on the bank's website and giving the transfer order). Being a millennial, I have wondered for some time what "payment to a bank account held by the Office" in Rfees 5(1) actually means.
• J 7/81 gives an answer: in the old days when the EPO had numerous bank accounts with numerous banks, you could go with some cash to a branch of the bank, and pay the sum in cash at the counter " for the EPO account" . The bank would take the cash, and credit the EPO account (kept by it) with the sum. 
• In J 7/81, the cash was accepted by one branch, but the EPO account was kept (on paper?) in another branch. The latter branch was informed of the payment only after some delay and after the expiration of the time limit, and credited the EPO account accordingly also after the time limit. In J 7/81, it was confirmed that the date of payment was the date the EPO account was credited, not the date of cash receipt. 

EPO J 0007/81 (J 7/81) - link

Summary of Facts and Submissions

I. The European patent application concerned (not published) was filed on 28 November 1980. On 2 March 1981 the sum of FF 5 290, paid by the applicant and covering the amount of FF 4 500 for the filing and search fees, was entered in the EPO account. It has been established that this sum was paid in cash on 29 December 1980 by the applicant at the counter of the Auxerre (Yonne) branch of the Banque Nationale de Paris (BNP) marked "for the EPO account". This banking establishment's agency in Paris, "France étranger", claimed however not to have received the necessary instructions to credit the EPO until 2 March 1981.

Reasons for the Decision

4. The date of the payment in suit could not be that stated on the "cash receipt" given by the bank to the debtor: 29 December 1980, but the date on which the sum was credited to the EPO: 2 March 1981. This is clear from Article 8 of the Rules relating to Fees which leaves no room for uncertainty in interpretation. [...] A cash payment to a bank in the national currency of the country in which the bank is located [...] constitutes a payment to a bank account held by the Office, which is therefore not deemed to be made until the date on which the sum is entered in that account.

T 0282/12 - Reverse application of partial priority

Key points

• In this appeal, novelty of claim 1 had to be decided of novelty over the claimed "dosage form" over a public prior use in the priority interval. The priority document D1 and claim 1 both included a range of 3 - 33%. However, D1 was a continuation in part, and there was an earlier filed patent application D22 relating to the same "dosage form" as claimed, but with 5 - 33% as range. 
• The Board decides that "in respect of the sub-range 5% to 33% D1 is not the first application within the meaning of Article 87(1) EPC. It follows that the part of claim 1 of the main request concerning the dosage forms wherein the gap width is between 5% to 33% of the length of the dosage form is not entitled to the priority date of D1". 
• Hence, the priority is partially invalid. However, this leads to lack of novelty over the public prior use (if the prior use is proven). "This part of claim 1 of the main request is the relevant one in relation to the alleged prior use since, [the public prior use had 17% according to the opponent] ". Accordingly, the case is remitted.

EPO Headnote

For reasons of consistency, the rationale of decision G 1/15 (concept of partial priority) must also apply in the context of deciding whether an application from which priority is claimed is the first application within the meaning of Article 87(1) EPC. Indeed, just as a priority application and a patent claiming priority therefrom may partially relate to the same invention, the priority application and an earlier application filed by the same applicant may also partially relate to the same invention. In that case, the priority application would be the first application in respect of only that part of the invention which is not the same as in the earlier application (see points 2.1 to 2.7).

EPO T 0282/12 / EPO T 282/12 - link

Reasons for the Decision

Main request

1. The appellant challenges the novelty of claim 1 on the basis of the public prior use of the product "Extra Strength Tylenol Rapid Release Gels". In its statement setting out the grounds of appeal it explains that this product is a coated oral dosage form of acetaminophen characterised inter alia by the presence of two gelatinous coatings that form a gap through which a subcoating is exposed, this gap having a width which is approximately 17% of the length of the dosage form.

Since the public prior use of this product allegedly occurred during the priority interval, it is necessary to assess the validity of the priority date claimed in order to establish whether the prior use forms part of the prior art pursuant to Article 54(2) EPC.

2. Assessment of priority

2.1 The dosage form of the main request comprises a first and a second gelatinous coating that do not abut or overlap with one another, thereby forming a gap through which a sub-coating is exposed.

In claim 1 of the main request this gap is set as being 3% to 33% of the length of the dosage from. The same range 3% to 33% is disclosed in the priority document D1 (paragraph [0109]). By contrast D22, an earlier application of the appellant relating to the same kind of gelatinous coated dosage forms, recites a range of 5% to 33% (paragraph [0107]).

2.2 It is not disputed by the parties, that the priority application D1 discloses the subject-matter of claim 1 of the main request.

The appellant contests, however, the validity of the priority claim on the basis of the argument that document D1 is not the first application, within the meaning of Article 87(1) EPC, disclosing the subject-matter of the main request. In its view, the first application is document D22, of which D1 is a continuation-in-part.