Priority

Applicable text

Although close, the rules applicable to the priority for standard European applications are those of the EPC (A87 CBE) and not those of CUP (A4 CUP) (J15 / 80).

For Euro-PCT applications, the PCT should be applied (A150 (2) EPC) which explicitly refers to CUP (A8.2.a PCT) or more precisely to its latest version (ie Stockholm Act).

Claims and priority correction

To learn how to claim and correct a priority, please look at: filing requirements.

Substantive conditions to be respected

Persons who can claim a priority

Every person

Any person may, in principle, claim a priority, whether or not that person is domiciled in a Member State.

Limitation

Nevertheless, this does not mean that there are no conditions for claiming priority.

The only people who can claim priority are (A87 (1) EPC):

• the applicant of the earlier application;
• his having cause.
  • the transfer must have occurred before the filing date of the application claiming priority;
  • the transfer must be valid according to the applicable legislation (eg in writing in France)
  • the transfer must be proved in writing before the EPO and this proof must be signed by both parties (T62 / 05). This proof may be produced later (Directives A-III 6.1).

In case of plurality of applicants when filing the application higher (Directives A-III 6.1):

• it is necessary that all the applicants or the successors of the priority application are among this plurality.
• a transfer to new applicants is not necessary as this is apparent from the joint filing of the new application.

Special case of a transfer of priority

Principle

It may happen that a person transfers the initial application as well as the right of priority (eg filing of a provisional US application by the inventors).

Date and proof of assignment

The new owner of the application must be able to prove that the assignment was carried out, this before the date of filing of the subsequent application (T1201 / 14 and A87 (1) EPC) (and claiming the priority of the original application).

It should also be noted that a contract subsequent to the filing of the second application but providing for retroactive effect is not considered to be in conformity with the requirements of theA87 (1) EPC (T1201 / 14).

Therefore, great care must be taken in the case of US patent applications filed on behalf of the inventors. You must have the assignment before the EP filing (T1537 / 13).

Law applicable to the assignment

To assess the validity of the assignment, it is necessary to refer to the national law applicable to the assignment (and not the law of the country of filing of the original application) (T0517 / 14): but the case law of the EPO has not established the rule to determine this applicable law (good luck, huh?).

In particular, there is no reason that theA72 EPC (which prescribes a written assignment for a patent application) has no reason to apply to an assignment of the right of priority (T0517 / 14): the assignment can be quite oral if the national law allows it.

Thus, the case must be analyzed to determine the applicable law. For example, this can be:

• the law of the employment contract for an assignment between an employee and an employer;
• the law chosen by the parties when signing the assignment contract.

Even more specific case: a partial transfer of the priority right

It seems entirely possible to assign only part of the right of priority (T969 / 14).

Thus, if an application contains two inventions (ie A and B), it is possible to yield A while retaining the benefit of B for oneself.

If unfortunately, the assignee files a patent application covering A and a bit of B, he will have the priority date for A but only the filing date for B (T969 / 14).

Requests to claim priority

Nature of requests

TheA87 (1) EPC specifies that the request may be:

• a patent application,
• a utility model application or
• an application for a utility certificate.

Industrial design applications (Geschmacksmuster) are excluded from this right (G3 / 93, J15 / 80, Directives A-III 6.1).

Origins of requests

The priority request must have been filed:

• in a state party to CUP (A87 (1) (a) EPC);
• in a member of the WTO (A87 (1) (a) EPCsince 13 December 2007, note that a WTO member is not necessarily a State);
• before the EPO ("in or for", A87 (1) EPC) and A87 (2) EPCbecause the EPC is a bilateral agreement, Directives A-III 6.2).

Although it is possible to foresee certain agreements with countries that do not respect these rules to extend this right (A87 (5) EPC), no communication has been made for the moment (Directives A-III 6.2).

Here is a table of the member countries with their date of membership:

STATE	WTO	PCT	PLT	CUP	EPC
South Africa	01/01/1995	16/03/2009		01/12/1947
Albania	08/09/2000	04/10/1995	17/05/2010	04/10/1995	01/03/2010
Algeria		08/03/2000		01/03/1966
Germany	01/01/1995	24/01/1978		01/05/2003	07/10/1977
Andorra				02/06/2004
angola	23/11/1996	27/12/2007		27/12/2007
Antigua and Barbuda	01/01/1995	17/03/2000		17/03/2000
Saudi Arabia - Kingdom of	11/12/2005	03/08/2013		11/03/2004
Argentina	01/01/1995			10/02/1967
Armenia	05/02/2003	25/12/1991		25/12/1991
Australia	01/01/1995	31/03/1980	16/03/2009	10/10/2025
Austria	01/01/1995	23/04/1979		01/01/2009	01/05/1979
Azerbaijan		25/12/1995		25/12/1995
bahamas				10/07/1973
Bahrain - Kingdom of	01/01/1995	18/03/2007	15/12/2005	29/10/1997
bangladesh	01/01/1995			03/03/1991
Barbados	01/01/1995	12/03/1985		12/03/1985
Belarus		25/12/1991		25/12/1991
Belgium	01/01/1995	14/12/1981		07/07/1884	07/10/1977
belize	01/01/1995	17/06/2000		17/06/2000
Benign	22/02/1996	26/02/1987		10/01/1967
Burma	01/01/1995
Bhutan				04/08/2000
Bolivia - Plurinational State of	12/09/1995			04/11/1993
Bosmie Herzegovina		07/09/1996	09/05/2012	01/03/1992
botswana	31/05/1995	30/10/2003		15/04/1998
Brazil	01/01/1995	09/04/1978		07/07/1884
Brunei Darussalam	01/01/1995	24/07/2012		17/02/2012
Bulgaria	01/12/1996	21/03/1984		13/06/2021	01/07/2002
Burkina Faso	03/06/1995	21/03/1989		19/11/1963
Burundi	23/07/1995			03/09/1977
Cambodia	13/10/2004			22/09/1998
Cameroon	13/12/2005	24/01/1978		10/05/1964
Canada	01/01/1995	02/01/1990		12/06/2025
Green cap	23/07/2008
Chile	01/01/1995	02/06/2009		14/06/1991
China	11/12/2001	01/01/1994		19/03/1985
Cyprus	30/07/1995	01/04/1998		17/01/1966	01/04/1998
Colombia	30/04/1995	28/01/2001		06/09/1996
Comoros		03/04/2005		03/04/2005
Congo	27/03/1997	24/01/1978		02/09/1963
Korea - Republic of	01/01/1995	10/08/1984		04/05/1980
Costa Rica	01/01/1995	03/08/1999		31/10/1995
Ivory Coast	01/01/1995	30/04/1991		23/10/1963
Croatia	30/11/2000	01/07/1998	28/04/2005	08/10/1991	01/01/2008
Cuba	01/01/1995	16/01/1996		17/11/2004
Denmark	01/01/1995	01/12/1978	28/04/2005	01/10/1984	01/01/1990
Djibouti	01/01/1995			13/05/2001
Dominica	01/01/1995	07/08/1999		07/08/1999
Egypt	01/01/1995	06/09/2003		01/07/1951
El Salvador	01/01/1995	17/08/2006		19/02/1994
United Arab Emirates	10/04/1996	10/03/1999		19/02/1996
Ecuador	21/01/1996	07/05/2001		22/06/1999
Spain	01/01/1995	16/11/1989		07/07/1884	01/10/1986
Estonia	13/11/1995	24/08/1994	28/04/2005	24/08/1994	01/07/2002
United States of America	01/01/1995	24/01/1978		30/05/1887
Former Yugoslav Republic of Macedonia	04/04/2003	10/08/1995	22/04/2010	08/09/1991	01/01/2009
Fiji	14/01/1996
Finland	01/01/1995	01/10/1980	06/03/2006	20/09/2021
la France	01/01/1995	25/02/1978	05/01/2010	07/07/1884	01/10/1977
Gabon	01/01/1995	24/01/1978		29/02/1964
Gambia	23/10/1996	09/12/1997		21/01/1992
Georgia	14/06/2000	25/12/1991		25/12/1991
Ghana	01/01/1995	26/02/1997		28/09/1976
Greece	01/01/1995	09/10/1990		02/10/2024	01/10/1986
Grenade	22/02/1996	22/09/1998		22/09/1998
Guatemala	01/01/1995	14/10/2006		18/08/1998
Guinea	01/01/1995	27/05/1991		05/02/1982
Guinea-Bissau	01/01/1995	12/12/1997		28/06/1988
Equatorial Guinea		17/07/2001		26/06/1997
guyana	01/01/1995			25/10/1994
Haiti	30/01/1996			01/07/1958
Honduras	01/01/1995	20/06/2006		04/02/1994
Hong Kong - China	01/01/1995
Hungary	01/01/1995	27/06/1980	12/03/2008	01/01/1979	01/01/2003
Solomon Islands	26/07/1996
India	01/01/1995	07/12/1998		07/12/1998
Indonesia	01/01/1995	05/09/1997		24/12/1950
Iran		04/10/2013		16/12/1959
iraq				24/01/1976
Ireland	01/01/1995	01/08/1992	27/05/2012	04/12/2025	01/08/1992
Iceland	01/01/1995	23/03/1995		05/05/1962	01/11/2004
Israel	01/01/1995	01/06/1996		24/03/1950
Italy	01/01/1995	28/03/1985		07/07/1884	01/12/1978
Jamaica	01/01/1995			24/12/1999
Japan	01/01/1995	01/10/1978		15/07/1899
Jordan	11/04/2000			17/07/1972
kazakhstan		25/12/1991	19/10/2011	25/12/1991
Kenya	01/01/1995	08/06/1994		14/06/1965
Kyrgyzstan	20/12/1998	25/12/1991	28/04/2005	25/12/1991
Kuwait	01/01/1995
Lesotho	31/05/1995	21/10/1985		28/09/1989
Latvia	10/02/1999	07/09/1993	12/06/2010	07/09/1993	01/07/2005
Lebanon				01/09/2024
Liberia		27/08/1994		27/08/1994
Libya		15/09/2005		28/09/1976
liechtenstein	01/09/1995		18/12/2009	14/07/1933	01/04/1980
Lithuania	31/05/2001	08/07/1994	03/02/2012	22/05/1994	01/12/2004
luxembourg	01/01/1995	30/04/1978		30/06/2022	07/10/1977
Macao - China	01/01/1995
Madagascar	17/11/1995	24/01/1978		21/12/1963
Malaysia	01/01/1995	16/08/2006		01/01/1989
Malawi	31/05/1995	24/01/1978		06/07/1964
Maldives	31/05/1995
Mali	31/05/1995	19/10/1984		01/03/1983
Malta	01/01/1995	01/03/2007		20/10/1967	01/03/2007
Morocco	01/01/1995	08/10/1999		30/07/2017
Mauritius	01/01/1995			24/09/1976
Mauritania	31/05/1995	13/04/1983		11/04/1965
Mexico	01/01/1995	01/01/1995		07/09/2003
moldova	26/07/2001	25/12/1991	28/04/2005
Monaco		22/06/1979		29/04/1956	01/12/1991
Mongolia	29/01/1997	27/05/1991		21/04/1985
Montenegro	29/04/2012	03/06/2006	09/03/2012	03/06/2006
mozambique	26/08/1995	18/05/2000		09/07/1998
Myanmar (Burma)	01/01/1995
Namibia	01/01/1995	01/01/2004		01/01/2004
Nepal	23/04/2004			22/06/2001
Nicaragua	03/09/1995	06/03/2003		03/07/1996
Niger	13/12/1996	21/03/1993		05/07/1964
Nigeria	01/01/1995	08/05/2005	28/04/2005	02/09/1963
Norway	01/01/1995	01/01/1980		01/07/1885	01/01/2008
New Zealand	01/01/1995	01/12/1992		29/07/1931
Oman	09/11/2000	26/10/2001	16/10/2007	14/07/1999
Uganda	01/01/1995	09/02/1995		14/06/1965
Uzbekistan		25/12/1991	19/07/2006	25/12/1991
Pakistan	01/01/1995			22/07/2004
Panama	06/09/1997	07/09/2012		19/10/1996
Papua New Guinea	09/06/1996	14/06/2003		15/05/1999
paraguay	01/01/1995			28/05/1994
Netherlands	01/01/1995	10/07/1979	27/12/2010	07/07/1884	07/10/1977
Peru	01/01/1995	06/06/2009		11/04/1995
philippines	01/01/1995	17/08/2001		27/09/1965
Poland	01/01/1995	25/12/1990		10/11/2019	01/03/2004
Portugal	01/01/1995	24/11/1992		07/07/1984	01/01/1992
Qatar	13/01/1996	03/08/2011		05/07/2000
Syrian Arab Republic		26/06/2003		01/09/2024
Central African Republic	31/05/1995	24/01/1978		19/11/1963
Democratic Republic of Congo	01/01/1997			31/01/1975
Dominican Republic	09/03/1995	28/05/2007
Kyrgyz Republic	20/12/1998
Lao People's Democratic Republic	02/02/2013	14/06/2006		08/10/1998
Democratic People's Republic of Korea		08/07/1980		10/06/1980
Slovak Republic	01/01/1995	01/01/1993		01/01/1993
Czech republic	01/01/1995	01/01/1993			01/07/2002
Romania	01/01/1995	23/07/1979	28/04/2005	06/10/2020	01/03/2003
United Kingdom	01/01/1995	24/01/1978	22/03/2006	07/07/1884	07/10/1977
Russia	22/08/2012	29/03/1978	12/08/2009	01/07/1965
Rwanda	22/05/1996	31/08/2011		01/03/1984
St. LUCIA	01/01/1995	30/08/1996		09/06/1995
St. Kitts and Nevis	21/02/1996	27/10/2005		09/04/1995
San Marino				04/03/1960	01/07/2009
Holy See				29/09/1960
Saint Vincent and the Grenadines	01/01/1995	06/08/2002		29/08/1995
samoa	10/05/2012	21/09/2013
Sao Tome and Principe		03/07/2008		12/05/1998
Senegal	01/01/1995	24/01/1978		21/12/1963
Serbia		01/02/1997	20/08/2010	27/04/1992	01/10/2010
seychelles		07/11/2002		07/11/2002
Sierra Leone	23/07/1995	17/06/1997		17/06/1997
Singapore	01/01/1995	23/02/1995		23/02/1995
Slovakia			28/04/2005		01/07/2002
Slovenia	30/07/1995	01/03/1994	28/04/2005	25/06/1991	01/12/2002
Sudan		16/04/1984		16/04/1984
Sri Lanka	01/01/1995	26/02/1982		29/12/1952
Sweden	01/01/1995	17/05/1978	27/12/2007	01/07/1885	01/05/1978
Swiss	01/01/1995	24/01/1978	01/07/2008	07/07/1884	07/10/1977
suriname	01/01/1995			25/11/1975
swaziland	01/01/1995	20/09/1994		12/05/1991
Tajikistan	02/03/2013	25/12/1991		25/12/1991
Chinese Taipei	01/01/2002
Tanzania	01/01/1995	14/09/1999		16/06/1963
Chad	19/10/1996	24/01/1978		19/11/1963
Thailand	01/01/1995	24/12/2009		02/08/2008
Togo	31/05/1995	24/01/1978		10/09/1967
tonga	27/07/2007			14/06/2001
Trinidad and Tobago	01/03/1995	10/03/1994		01/08/1964
Tunisia	29/03/1995	10/12/2001		07/07/1884
Turkmenistan		25/12/1991		25/12/1991
Turkey	26/03/1995	01/01/1996		10/10/2025	01/11/2000
Ukraine	16/05/2008	25/12/1991	28/04/2005	25/12/1991
European Union	01/01/1995
Uruguay	01/01/1995			18/03/1967
Vanuatu - Republic of	24/08/2012
Venezuela - Bolivarian Republic of	01/01/1995			12/09/1995
Viet Nam	11/01/2007	10/03/1993		08/03/1969
Yemen				15/02/2007
Zambia	01/01/1995	15/11/2001		06/04/1965
Zimbabwe	05/03/1995	11/06/1997		18/04/1980

Same invention

A subsequent application contains the same invention as the earlier application DA if (F-VI Guidelines 2.2 and G2 / 98) the person skilled in the art can, using his general knowledge, deduce directly and without ambiguity from the contents of DA the object of DU.

The drawings of the DA application can be used (A88 (4) EPC and T169 / 83).

The elements mentioned in the reference to the state of the art can not be taken into account (F-VI Guidelines 2.2).

Finally, it is necessary that the content of DA is sufficiently described and allows the realization of the invention (T843 / 03).

If the claim contains an admissible disclaimer, this does not affect the validity of the priority (F-VI Guidelines 2.2).

12 month period from the first request

Generality

It is only possible to claim the priority of an application during a period of 12 months from the first application (A87 (1) EPC).

If this deadline is not respected, it is possible to request a restitutio in integrum (A122 EPC), but only within a 2 months from the expiry of the first period (R136 (1) EPC, Directives A-III 6.6).

Real first request

A first request is a request that has been (F-VI guidelines 1.4):

• for the first time,
• filed in a CUP party state (or, without doubt, without certainty, a member of the WTO),
• and referring to the same invention as a subsequent application.

The principle is as follows:

Only the EP1 request can claim the priority of D1, and EP1 can not claim other priorities.

First partial request

decision G1 / 15 (which dealt with the case of the poisoned divisionaries) opens the way to new difficulties that we will try to understand here.

Imagine the following situation (T282 / 12) :

• a US1 claim has a range of 5-33% and a US2 claim has a range of 3-33%.
• an EP application is filed claiming the US2 application.
• an inferior prior art (between the priority US2 and the depot EP) discloses the value of 17%.

Is the prior art opposable?

In the decision T282 / 12, the Board of Appeal considers that the logic of G1 / 15 For reasons of coherence, the questions of priority must be applied: priority request US2 is the first request only for the part of the invention which is not the same as that of the earlier application US1.

The Board therefore finds that for the 5-33% range, US2 is not the first application, and the patent does not have priority, while for the 3- <5% range, US2 is the first application and the patent benefits from the priority.

First Request Fiction

Principle

By fiction, it is possible to consider a subsequent request as "first demand" (F-VI 1.4.1 Directives).

To do this, it is necessary to respect the conditions of theA87 (4) EPC :

• the subsequent application must:
  • have the same object that the previous application (true first request normally);
  • have been filed in or for the same state the previous application (or, without doubt, without certainty, a member of the WTO),
• the earlier application must, on the filing date of the subsequent application,
  • have been withdrawn, abandoned or refused,
  • without being submitted topublic inspection
  • without leaving subsist rights,
  • that she not yet served basic for the claim the right of priority.

The earlier application can no longer be used as a basis for claiming the right of priority.

In this example, at the D2 filing date, there is no entitlement for D1 and D1 has not been used as a basis for another priority claim.

Not withdrawn, abandoned or refused

The earlier application may, on the date of filing of the subsequent application, have not been withdrawn, abandoned or refused (F-VI 1.4.1 Directives).

In this case, the priority claim for the subsequent application is not valid.

Have been submitted topublic inspection

This public inspection may be, in particular:

• publication under theA93 (1) EPC ;
• access to the file under theA128 (1) EPC because the applicant has authorized a third party to access it;
• access to the file under theA128 (2) EPC if the applicant has availed himself of his European patent application against a third party.

Leave rights

It is not very clear what rights are covered by this expression.

One can think of the rights that allow another application to benefit from the filing date of a subsequent application (out of priority) (F-VI 1.4.1 Directives):

• US "continuation" or "continuation-in-part";
• divisionaries;
• etc.

In case of doubt, and if the priority claim is important, the EPO may invite the applicant to prove that the previous application did not leave the right to remain (F-VI 1.4.1 Directives).

In the case presented, the D1 request is a first request for A, B and C, while D2 is a first request for D.

Note that EP1 will be a A54 (2) EPC for EP2 because of the publication (for A and B).

In the case of continuation-in-part, the elements common to the earlier application benefit from its filing date.

Previous request outside CUP / WTO

If the previous application is filed outside the UPC / WTO, the earlier application will not be a first application (because it will not have created a right of priority, the contrary would be contrary to the spirit of the CUP) and will therefore not interfere. not a priority claim of a subsequent application in a CUP / WTO country.

Previous request outside CUP but in a WTO member territory

We can ask what happens if:

• the previous application is filed outside the CUP but in a WTO territory
• the earlier application is withdrawn without having left any rights
• a subsequent application is filed in the same territory.

Intuitively, we would say that the subsequent request can be considered as a first request in the light ofA87 (4) EPC.

Formally, this is not certain because the letter of the article says " filed in or for the same State "(State referring to CUP States, WTO members are not necessarily states, like Taiwan).

Personally, I do not think that this poses a problem (ie the subsequent request can be considered as a first request) because the fact that theA87 (4) EPC mentions only States (and not a member of the World Trade Organization such as theA87 (1) EPC appears to be an oversight of the legislator when amending the article: moreover, the article A87 (5) EPC which refers to theA87 (4) EPC mentions the members of the WTO.

Not having served as the basis for a priority claim

The mere fact that an application has claimed the priority of the earlier application (even if no publication takes place) renders final the fact that the earlier application is a first application.

Same applicant

If the applicant is not the same in the application (A87 (4) EPC), things can be quite surprising.

This situation is possible if there has been no assignment of the priority right from Z to W (T788 / 05).

Exhaustion of the right of priority

Despite case law (T998 / 99) which prohibited the claiming of several deposit priorities having the same object in the same country and filed within a 12 months, it seems today that this is possible (T15 / 01 and T5 / 05).

Claiming Multiple Priorities

It is quite possible to claim priority requests for different objects. Each object will then have a different date (A88 (2) EPC).

Formal requirements

See the article on filing requirements.

Translation of the priority document

Principle

When filing and claiming a new priority, it is not necessary to translate the priority request.

Nevertheless, during the examination or during the opposition (exceptional case Notice from the European Patent Office dated 28 January 2013 concerning Rule 53 (3) EPC as amended, OG 2013, 150), it may happen that such a translation is requested: if the validity of the priority claim is relevant to establish whether the invention is patentable (ie if a relevant interleaved document is found by the Examiner), then a translation will be to be provided in one of the official languages after notification by the EPO and in a deadline (R53 (3) EPC).

This time limit is (" Notice from the European Patent Office dated 28 January 2013 concerning Rule 53 (3) EPC as amended, OG 2013, 150):

• in case of European demand:
  • aligned with the time limit for the provision of the request for examination (R70 (1) EPC) or the time to confirm the examination (R70 (2) EPC) depending on the particular case, if the validity of the priority claim becomes significant at the moment the European search report is completed.
  • by the Examining Division, if the validity of the priority claim becomes significant during the examination procedure.
• in case of euroPCT request:
  • granted by the Examining Division (if the EPO was ISA or SISA)
• in case of European patent:
  • granted by the Opposition Division, if the validity of the priority claim becomes significant during the opposition proceedings.

TheA121 EPC is applicable to this deadline for the applicant while theA122 EPC is applicable for the holder.

Full translation statement

It is also possible to provide a declaration that the European application is a complete translation of the priority document (R53 (3) EPCsecond sentence).

This declaration may be made in the request for grant form (Directives A-III 6.8.6).

Sanction

If no translation is produced within the deadlines, the intermediate documents will be considered as opposable (ie loss of the right of priority, A90 (5) EPC and R53 (3) EPC, last phrase).

Various

Claim date

Principle

The date of each claim is analyzed independently of each other.

If an EP application filed at t1 claims an object A and the priority filed at t0 contains object A, then claim A has an effective date t0 (A89 CBE).

A and B

If an EP application filed at t2 claims an object "A and B" and the claim claims two priorities (A to t0 and B to t1), then claim "A and B" has an effective date t2 (filing date of the EP application).

This principle will be an exception if the priority filed at t1 explicitly mentions the priority deposited at t0 by indicating that the characteristics of the two documents can be combined in a particular way (F-VI 1.5 Guidelines).

A or B

The use of the word "or" is in fact a sign that the claim must be analyzed as two claims.

If an EP application filed at t2 claims an object "A or B" and that claim claims two priorities (A to t0 and B to t1), then the claim "A or B" has two effective dates:

• t1 for B;
• t0 for A.

A and / or B

A claim "A and / or B" contains 3 objects "A", "B" and "A and B".

Designation of the State of the priority request

It is quite possible to designate in the European patent application the State in which the priority application was filed (ie internal priority).

This is not foreseen by CUP, but it is in the EPC (A87 (1) EPC).

This is also possible in the PCT depending on the national provisions applicable for that State (A8.2.b PCT).

Withdrawal of a priority after publication

The fact of withdrawing a priority after the publication of an application does not modify its opposability or not to another request as state of the art A54 (3) EPC (G-IV Guidelines 5.1).

It can thus happen things quite "surprising" as shown in the following diagram:

Thus, neither of the two EP1 and EP2 applications is new: they mutilate each other under theA54 (3) EPC.

Claiming an invalid priority

Claiming a priority does not protect against the opposability of this priority demand.

In the following situation, the priority request EP1 is opposable under theA54 (3) EPC against object A claimed by EP2 because the priority is not valid.

The possible options to avoid such a problem are:

• insert a disclaimer in the EP2 claim (G1 / 03);
• withdraw the EP1 application before it is published (G-IV Guidelines 5.1.1).

Partial priority

It is quite possible for a claim to have several different priority dates for different objects (T571 / 10).

This happens most frequently when a claim proposes an alternative, one branch of the alternative being supported by the priority while the other is not (or is supported by another priority).

Nevertheless, it is not necessary for the alternatives to be stated as such in the application, or for the word "or" to be actually used (T571 / 10): it is sufficient to be able to identify conceptuallyby comparing the object claimed with the disclosure of the priority document, a limited number of clearly defined alternative objects.

The Grand Chamber explains in point 6.4 of the decision G1 / 15 how to establish if a partial priority is valid for a generic claim of type "OR":

1. determine the object disclosed in the priority application and which is relevant to the prior art disclosed during the priority period,
2. consider whether this object is encompassed by the claim of the claim claiming priority.

If so, the claim is in fact conceptually divided into two parts, the first one corresponding to the invention disclosed directly and unambiguously in the priority document, the second being the remaining part of the "OR" claim. , which does not benefit from the priority but in itself gives rise to a right of priority according to theA88 (3) EPC.

This approach was followed in the decision T260 / 14 or T1519 / 15.