Legal framework
Under Article 87(1) EPC, a first filing for a patent, utility model or utility certificate may give rise to a right of priority for a later European patent application filed within twelve months, but only for the same invention. A German utility model application can therefore serve as a valid priority application.
The “same invention” test requires the claimed subject-matter to be directly and unambiguously derivable from the priority application as a whole, using common general knowledge. This follows from G 2/98 and is reflected in Guidelines F-VI, 2.2.
Under Article 88(3) EPC, the priority right covers only those elements of the European application which are included in the priority application. The EPC also allows multiple or partial priorities for one claim.
According to G 1/15 and Guidelines F-VI, 1.5, a generic “OR” claim may enjoy partial priority for subject-matter disclosed in the priority document, even if the claim is broader than that disclosure. The claim is then conceptually divided into a priority-entitled part and a non-priority-entitled part.
Finally, Article 54(2) EPC provides that the state of the art comprises everything made available to the public before the relevant filing date, by written description, oral description, use or any other way.
Statement a)
False.
Claim 2 is directed to a solution of substance X in water. This subject-matter is directly disclosed in DE-C, the German utility model application filed in December 2023.
Therefore, claim 2 is entitled to the priority date of DE-C under Article 87(1) EPC. The scientific publication appeared in September 2024, i.e. after the priority date but before the filing date of EP-C. Because claim 2 validly enjoys the December 2023 priority date, the September 2024 publication is not prior art against claim 2 under Article 54(2) EPC.
Thus, claim 2 does not lack novelty with respect to the scientific publication.
Statement b)
True, but with an important nuance.
Claim 1 is directed broadly to a “solution of substance X”. DE-C discloses only a solution of X in water. Therefore, claim 1 is broader than the priority disclosure.
The proposed explanation says that claim 1 simply has the filing date of EP-C. That is too broad. Under G 1/15, claim 1 may enjoy partial priority for the water embodiment disclosed in DE-C. The remaining subject-matter of claim 1, for example solutions of X in solvents other than water, does not enjoy priority and has the filing date of EP-C. See Guidelines F-VI, 1.5.
The scientific publication in September 2024 is therefore in the priority interval. It is not prior art against the water embodiment of claim 1, but it may be considered Article 54(2) EPC prior art for the non-priority-entitled part of claim 1. For that reason, the statement can be treated as true, provided it is understood in this limited sense.
Statement c)
True.
Claim 3 is directed to a solution of substance X in alcohol. DE-C discloses a solution of X in water, but not a solution of X in alcohol.
Therefore, claim 3 is not entitled to the priority date of DE-C. Its effective date is the filing date of EP-C in November 2024.
DE-C was published in March 2024, before the filing date of EP-C. Since claim 3 does not validly benefit from the priority date of DE-C, the published DE-C is prior art under Article 54(2) EPC for claim 3.
However, DE-C does not disclose the alcohol embodiment, so it does not destroy the novelty of claim 3.
Statement d)
False.
The scientific publication discloses a solution of substance X in water. Claim 3 is directed to a solution of substance X in alcohol.
For novelty, the prior-art disclosure must directly and unambiguously disclose the claimed subject-matter. A disclosure of water as solvent is not a disclosure of alcohol as solvent. Therefore, the scientific publication does not anticipate claim 3.
Claim 3 may have other patentability issues, but it does not lack novelty over that publication.
Exam tip
When a priority application discloses a specific embodiment and the later claim is broader, do not automatically deny priority for the whole claim. Think of partial priority under G 1/15. Here, “solution of X” can be split conceptually into the water embodiment, which has priority, and the remaining embodiments, which do not. Then check each prior-art disclosure against the correct effective date.
Legal Disclaimer
The information provided in this post is for general informational purposes only and does not constitute legal advice. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.