EPO, Technical Board of Appeal 3.3.07, decision of November 9, 2017 in case T 282/17 – Coated tablets/JOHNSON & JOHNSON

In its decision G 1/15 (OJ EPO 2017, A82), the Enlarged Board of Appeal of the EPO had decided that a generically defined claim may enjoy partial priority from a first application disclosing an alternative part of its subject-matter. This has the effect that a disclosure of this part during the priority interval cannot be cited as prior art.

The reported decision applies this principle to the assessment of what is the first application within the meaning of Article 87 (1) EPC, corresponding to Art. 4 A(1) of the Paris Convention, from which priority can be claimed. The claim at issue for a coated tablet defined a feature for the structure of the tablet by a range of 3% to 33% of a given length.

This range was disclosed for the same tablet in the US continuation-in-part- application from which priority was claimed. However, a previous application in the US from which the priority application is the continuation-in-part already defined a narrower range of 5% to 33% and disclosed all other features. This means, that the previous application already gave rise for a right of priority for a tablet with the narrower range.

On the basis of the principle laid down in G 1/15, the claimed subject-matter has to be conceptually divided into two parts, i.e. 3% to 5% enjoying priority from the continuation-in-part disclosing a tablet with this part of the range as claimed for the first time and 5% to 33% not enjoying priority.
The catchword of the decision reads:
For reasons of consistency, the rationale of decision G 1/15 (concept of partial priority) must also apply in the context of deciding whether an application from which priority is claimed is the first application within the meaning of Article 87(1) EPC. Indeed, just as a priority application and a patent claiming priority therefrom may partially relate to the same invention, the priority application and an earlier application filed by the same applicant may also partially relate to the same invention. In that case, the priority application would be the first application in respect of only that part of the invention which is not the same as in the earlier application.

A copy of the decision can be read here.

Reported by: Dr. Rudolf Teschemacher, Bardehle Pagenberg