4. First application in respect of the invention
Overview
In T 1662/14 claim 1 of the main request was to an anasthetic agent delivery system for intravenously delivering a desired dose of propofol to a patient. The board had to determine whether and to what extent Euro-PCT application D2 was prior art according to Art. 54(3) EPC. While D2 had a filing and publication date after the date of filing of the patent in suit (which claimed no priority), it claimed priority from D3, a US application of the predecessor in title of the applicant of D2 which had the same technical content as D2 and was filed before the date of filing of the patent in suit. The board examined the validity of the priority claimed from D3. D11 was also a US application of the predecessor in title of the applicant of D2 and had the same technical content as the original application from which the patent in suit was derived. D3 was a continuation-in-part of D11. Hence D11 had left some rights outstanding within the meaning of Art. 87(4) EPC. It followed that D11, and not D3, was the first application in respect of the invention which it disclosed. Thus, D2 could not validly claim priority from D3 for that invention. However, while for the general subject-matter already present in D11 priority from D3 could not be validly claimed by D2, the disclosure of D2 contained more specific elements in that respect. In other words, D2 disclosed a system comprising additional technical features not disclosed in D11. As a consequence, D11 was not the first application for the more specific system. Hence the priority claim of D2 was valid in respect of such a system, for which D3 was the first application. That specific system belonged to the state of the art according to Art. 54(3) EPC and anticipated the subject-matter of claim 1.
4. First application in respect of the invention
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In principle, only the first application filed in a state party to the Paris Convention or a member of the WTO can form the basis of a priority right. In the EPC this is made clear in Art. 87(1) and (4) EPC.
Therefore, if apart from the application whose priority is being claimed in the subsequent European application, an earlier previous application was also filed, in order to check the validity of the priority claim it must be established whether the invention claimed in the subsequent application was already disclosed in the earlier previous application – see in this chapter II.D.4.1. Decisions also focusing on the identity of the applicants are dealt with in this chapter II.D.4.2.
In T 477/06 the board held first that since Euro-PCT application D8 had been deemed withdrawn due to non-payment of the designation fees (R. 23a EPC 1973), it was not prior art under Art. 54(3), (4) EPC 1973 for the application in suit. However, it had been filed by the same applicant and earlier than the priority application. In view of the fact that claimed subject-matter was anticipated by this earlier application, the priority application was not the first application within the terms of Art. 87(1) and (4) EPC 1973 (cf. Art. 8(2)(b) PCT), so that the priority claim was not valid. Hence, the application in suit enjoyed priority only from the date of filing and D8 was prior art under Art. 54(2) EPC 1973. See also T 1222/11 in chapter II.D.4.1. below.
For the case of a priority held invalid because it was not shown, for the purpose of Art. 87(4) EPC 1973, that at the date of filing of the application from which priority was claimed, a previous first application filed by the applicant in respect of the same invention had been withdrawn, see T 1056/01 (reported in chapter III.G.4.3.5).
- Case law 2019