G 0002/98 - "The same invention" - #8

Citation rank: 8
No. of citations: 240

Decision G 2/98 answered the question which requirements have to be met in order for a priority claim (Art. 87 EPC) to be valid.

The relevance of G 2/98, however, goes beyond the question of priority. The key requirement for validly claiming priority, i.e., "direct and unambiguous disclosure" has then been applied to other important aspects of the EPC procedure, namely in the assessment of novelty (Art. 54), and admissibility of amendments (Art. 123(2)).

The main question that was referred to the Enlarged Board in G 2/98 was whether the requirement of the "same invention" in Article 87(1) EPC means that "the extent of the right to priority derivable from a priority application for a later application is determined by, and at the same time limited to, what is at least implicitly disclosed in the priority application". The case law of the Boards of Appeal had not been entirely consistent on this question.

The Enlarged Board looked, i.a., at Articles 4F and 4H of the Paris Convention, which is an independent, separate set of priority rules, which rules, however, should be interpreted in the same manner as the priority rules of the EPC (because the latter constitutes, according to its preamble, a special agreement within the meaning of Article 19 of the Paris Convention).

The Enlarged Board finally concluded:

"[A]ccording to that analysis, a narrow or strict interpretation of the concept of "the same invention", equating it to the concept of "the same subject-matter" referred to in Article 87(4) EPC (cf. point 2 supra), is necessary to ensure a proper exercise of priority rights in full conformity inter alia with the principles of equal treatment of the applicant and third parties (cf. point 8.1 supra) and legal certainty (cf. point 8.3 supra) and with the requirement of consistency with regard to the assessment of novelty and inventive step (cf. point 8.1 supra). [...] It 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 person skilled in the art can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole." (point 9 of the reasons, emphasis added)

As mentioned above, the same strict standard is nowadays applied in the assessment of novelty over a prior art document, and in the assessment of admissibility of amendments.

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Headnote:

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.

The full text of the decision can be found here.