Issue 05/67 | December 19, 2005
"Exhaustion of Priority" in Europe?

In April 2005 the Board of Appeal of the EPO published its highly controversial T 998/99 decision regarding the exhaustion of priority under the European Patent Convention (EPC). The case to be judged in T 998/99 concerned the question of whether a European Patent Application may validly claim priority of an earlier application although another European Patent Application had already claimed the priority of this earlier application. In T 998/99, the competent Board of Appeal answered this question in the negative. Consequently, the earlier application may be novelty-destroying for further applications of its patent family. T 998/99 explicitly states that the EPC does not provide for the possibility of filing several applications in respect of the same subject-matter in one and the same country over the priority period on the basis of a single priority document.

Meanwhile, another very recent decision T 0015/01 of a different Board of Appeal explicitly contradicts the view expressed in T 998/99: "The doctrine of exhaustion of priority rights is to be rejected". This Board regards the right of priority as one of the cornerstones of the Paris Convention recognising the possibility of claiming multiple and partial priorities in order to obtain efficient international protection for an invention. These principles are also reflected in the corresponding provisions of the EPC and should be applied accordingly by the EPO.

In summary, the two decisions concerning (non-)exhaustion of priority are contradictive. A binding decision of the Enlarged Board of Appeal would be desirable, although such a decision cannot be expected in the near future. For the time being, to be on the safe side, special care should be taken when claiming priority in proceedings before the EPO. Smart filing strategies might include filing multiple priority-establishing applications or filing Divisional Applications. Moreover, T 998/99 might even be advantageous for the opponent in Opposition Proceedings to attack the effective date of an European Patent in dispute.

(T 998/99: available by OJ EPO, 4/2005, pp. 229-239; T 0015/01: available by Online File Inspection via http://ofi.epoline.org/view/GetDossier, application number "92913710".)

To discuss these topics further, please feel free to contact the authors Dr. Holger Glas (glas@maiwald.de), Dr. Andreas Dilg, Dipl.-Phys. (dilg@maiwald.de) and Ignaz Gall, Dipl.-Ing. (gall@maiwald.de) of Maiwald Patentanwalts GmbH (www.maiwald.de), Munich, Germany.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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