Editor's note: In recent years, The European Patent Office is handling it "Harmful priority" In question, There are conflicting interpretations and judgments between multiple rulings. Therefore, Expanded appeal board (Enlarged Board of Appeal) in 2016 years 11 month 29 Japan's ruling on the case has given a unified interpretation of the issue. Look down together!

[background] "Harmful priority" (poisonous priorities) Occurs in the following situations: A patent application filed later successfully passed the priority application, Priority date, However, a parallel patent application filed earlier by a similar family (Separate application or mother application) (Hereinafter referred to as "Parallel application" ) The actual application date was retained because the priority application was not approved. In accordance with "European patent convention (European Patent Convention) " The first 54 article 3 Provision of paragraph, A patent application with a priority date may become prior art that undermines parallel applications by other members of the same class. The reason why the above parallel application fails to pass the priority application is, The law prohibits the existence of different priority days on the same claim. If the patent application includes both the priority file subject matter and other new alternative subject matter content in the same claim, Or use a generic representation that includes the corresponding topic of the priority file (generalisation) , There will be partial priority in the same claim (partial priority) Or multiple priority (multiple priority) The situation of, That is, there are different priority days between the subjects of the same claim. In recent years, The European Patent Office is handling it "Harmful priority" In question, There are conflicting interpretations and judgments between multiple rulings. Therefore, Expanded appeal board (Enlarged Board of Appeal) in 2016 years 11 month 29 Japan's ruling on the case has given a unified interpretation of the issue.

[discover] The Expanded Appeal Board stated in its ruling, basis "European patent convention" , More than one alternative subject content, including the priority subject, should not be included in a claim simply because it uses a generic expression or otherwise, Apply for partial priority in denying the claim (partial priority) . As long as it can be shown that the above alternative subjects were first explicitly disclosed in an achievable manner, directly or indirectly, by the priority document, That is, it should be allowed to apply for partial priority. To settle the dispute in this case, The Expanded Appeal Board cited in its decision "Paris convention (Paris Convention) " The first 4F Articles and regulations 4G article, and "European patent convention" The first 88 article 2 Paragraph to regulation 4 Paragraph of the relevant provisions. Also refer to "European patent convention" "Preparatory work" The first C Item memorandum content, Multiple priorities are specifically discussed (multiple priorities) problem. In addition, The Expanded Appeals Board also focused on No G 2/98 The contents of the ruling, Intermediate control 6. 7 Item write: "The use of generic generalizations should be allowed (generic term) Or formula (formula) The right to claim multiple priorities, As long as it can be shown that the generic generalization or formula contains a finite number, Clearly identifiable alternative themes will do. "

[comment] Some of the previous cases will be No G 2/98 Order no 6. 7 The contents of the item are interpreted as, A claim has an enlarged chemical formula compared to the corresponding content of the priority document, Extend the range of qualified values, Compounds and other general expressions of the same genus, Multiple priorities shall not be recognized. In other similar cases, it was interpreted as, Multiple priorities can be claimed within the same claim. Provided that the claim can be divided into two parts: (1) The subject disclosed in the priority document; and (2) Other alternative topics not disclosed in the priority document. And it follows that, Since the part that coincides with the priority file applies the priority date, Therefore, other applications of the same family with the same priority date are not included "European patent convention" The first 54 article 3 Section defined "Prior art" . In this case, The expanded Appeals Committee adopted the prevailing opinion of many previous decisions in similar cases, Limiting the use of a patent application document that undermines the novelty of a patent application by another family member. The Enlargement Commission evaluated the definition of priority in relation to priority, Especially when it comes to partial and multiple priorities, Draw a conclusion: "European patent convention" The only requirement for the application document claiming priority is with the priority document "Belonging to the same invention" . The first G 2/98 The decision has unified the criteria for judgment, When an application is approved "Disclosure test (disclosure test) " , It shall be deemed to have satisfied the above requirements for priority. "Disclosure test" The criteria are consistent with the method used to analyze the new substance, namely: The subject matter of the claim to be protected can be directly and explicitly deduced by a person skilled in the field using the common sense of the field from the existing application documents. Therefore, Future treatment "Harmful priority" Problem time, The topics disclosed in the priority file need to be analyzed first, Then determine whether there are generic generalizations containing the above topics in the corresponding claims of the patent application claiming priority. If there is, The generic generalization should continue to be divided into two parts: (1) The section of the topic that coincides with the priority file; and (2) New content that is not disclosed in the priority document. To evaluate the novelty of the patent application by reference to the prior art published after the priority date, Only for new content that is not disclosed in the priority document. The decision of the expanded Board of Appeals resolves the issue of conflicts between homogeneous patent applications that result in one application undermining the novelty of other homogeneous applications. Here's the theory behind it, The purpose of the priority system is to protect the priority rights of the applicant to the subject contents disclosed after the priority documents. after, Many of the cases awaiting the decision will soon follow suit.

author: Patricia SALAMA, Associate partner at Esaberi, European patent agent compile: Li Fangqian, The Esaberi intern source: Esabaril (ELZABURU) Intellectual property rights