Extracts from recently published decisions
of the Boards of Appeal of the EPO
Thanks. As for T1222/11, I think it is noteworthy that pages 2 onwards are left out from Travaux Preparatoires (cf. Art. 88, p. 89).
In the 'German' version, the entire document is included, see Art 88, p 87-95.
So it seem, and also in the French version. So, according to the preparatory material (TP), we have a 2-1 situation for broadening of the priority.
The example from page 3 onwards is interesting - with a priority filing describing chlorine and the later application a halogen. The document appears to assume that the right to priority is valid, at least for chlorine and the rest of the priority claim being supported by an intermediate filing such that the sum of the priortiy claims equals the actual claim. Of course, in EPO speak since none of the prior applications discloses the broader halogen, no priority claim exists, which the document argues is against the Paris Convention.
Although I'm not a chemist, I think the example on page 3 is in line with EPO case law. The skilled person would read "halogen" as "one of fluorine, chlorine, bromine and iodine" (the other halogens in the periodic table not being realistic). So we have an OR-claim with four alternatives, the "chlorine" alternative claiming priority from the first priority document and the other three alternatives claiming priority from the second priority alternative.I believe paragraph 17 has to be read in this light as well: the claim to "halogen" includes as individualised alternatives a claim to "chlorine", and that invention is disclosed by the earlier first priority document. (If one refuses to interpret halogen as a list of the four individualised halogens, then a claim to halogen may claim priority from the second priority document, since the first priority document does not disclose the broader "halogen".) I don't really understand paragraph 18. The subclaims are not frivolous because, by the author's assumption, they are the only way to get protection. The better argument seems to be that nobody benefits from forcing the applicant to draft four independent subclaims instead of giving him the claim to "halogen". The memorandum indeed provides this argument in paragraph 20.
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