Priority and EPC

The entitlement of partial priority has been dealt recently by the Board of Appeal and has held in its decision that partial priority may not be refused only for a claim embracing alternative subject matter by virtue of one or more generic expressions. The partial priority can also be claimed if the alternative subject matter is disclosed for the first time directly, unambiguously to enable the subject matter in the priority document.

The Court held that if a claim is broader than the claim made in the priority document, then priority may be claimed for such element, but, priority cannot be claimed for other embodiments.   It is also of no relevance whether one claim for which partial priority is claimed encompasses only one element disclosed in a priority document or a plurality of elements disclosed in one or more priority documents. The EPC does not consider other claims beyond the invention be it for simple, multiple or partial priority.

Now the issue arises if a subject matter falling within a generic “OR” claim may claim partial priority. First of all it is to be determined if the relevant subject matter falls within the prior art disclosure. If the answer is in affirmative the claim is divided into two parts. The first is in respect to the invention disclosed directly and unambiguously in the priority document. The second part is generic “OR” claim which does not enjoy priority but in itself creates a priority claim.

The issue in connection to the relevant disclosures in the priority document taken as a whole and whether the subject matter is falling within the ambit of the second or the subsequent application is a common practice in the European Patent System.