But first, some background.
|Even Merpel is subject to partial priority|
The use of a generic term or formula in a claim for which multiple priorities are claimed [...] is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters.
The concrete question to be resolved here is whether Claim 1 enjoys partial priority to the extent that the use of [a specific compound] as disclosed in [the priority document] is encompassed by the more generic definition of Claim 1, rather than being spelt out in it.
This Kat is pleased to see that the Board purposely formulated the questions in terms broader than those suggested by the parties, such that they reflect the issues of partial priority generally, which can arise whenever there is state of the art potentially relevant under either Article 54(3) or 54(2) EPC, and not only in situations of "poisonous priority".1. Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic "OR"-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document?2. If the answer is yes, subject to certain conditions, is the proviso "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" in point 6.7 of G 2/98 to be taken as the legal test for assessing entitlement to partial priority for a generic "OR"claim?3. If the answer to question 2 is yes, how are the criteria "limited number" and "clearly defined alternative subject-matters" to be interpreted and applied?4. If the answer to question 2 is no, how is entitlement to partial priority to be assessed for a generic "OR"-claim?5. If an affirmative answer is given to question 1, may subject-matter disclosed in a parent or divisional application of a European patent application be cited as state of the art under Article 54(3) EPC against subject-matter disclosed in the priority document and encompassed as an alternative in a generic "OR"-claim of the said European patent application or of the patent granted thereon?
This Kat would like to thank his colleague Rob Barker for authorial assistance with this post.