Understanding Multiple and Partial Priorities in Patent Law

In patent law, the concept of multiple priorities and partial priorities can significantly influence the scope of patent protection an applicant can secure. These legal provisions allow applicants to claim priority from multiple earlier applications and, in some cases, from only parts of an invention disclosed in earlier filings. While these provisions provide flexibility and broader protection, they also require a nuanced understanding of the underlying rules, particularly in jurisdictions like Europe. Let’s break down these concepts and explore how they work in the context of the European Patent Office (EPO).

1. Multiple Priorities

Multiple priorities refer to a situation where a single patent application claims priority from more than one earlier application. This concept is most commonly seen in situations where an invention is disclosed in multiple parts or embodiments, each of which may have been filed in different countries.

Key Points on Multiple Priorities:

Multiple Applications, One Patent: A European patent application can claim the priority of multiple earlier applications (which may have been filed in different countries or jurisdictions).

Separate Embodiments: If a European application discloses two distinct embodiments of an invention (let’s say A and B), each embodiment can claim priority from a separate earlier filing. For example, embodiment A could have been disclosed in a French application, and embodiment B could have been disclosed in a German application. Both priority dates can be claimed for their respective embodiments.

Claiming Multiple Priority Dates: If embodiments A and B are included in a single claim as alternatives (e.g., "either A or B"), both the French and German priority dates will apply to the claim, with each part of the claim carrying the appropriate priority date for the embodiment it covers.

Example:

Embodiment A disclosed in a French patent application, and Embodiment B disclosed in a German application, both filed within 12 months of each other, can be claimed as priorities in a single European patent application. Each embodiment will carry its respective priority date.

2. Partial Priority

Partial priority applies when an applicant claims priority for only part of the subject matter of an invention disclosed in an earlier application. It typically arises in cases where an invention in a new application encompasses a generic claim (e.g., an "OR" claim), but only part of the claimed invention was actually disclosed in an earlier application.

Key Points on Partial Priority:

Generic "OR" Claims: A generic "OR" claim is one that covers alternatives or a broad range of subject matter. Under certain conditions, partial priority can be claimed for those parts of the claim that are disclosed in the priority document, while the remainder of the claim is not entitled to the earlier priority.

Direct and Unambiguous Disclosure: The subject matter that benefits from partial priority must have been disclosed directly or at least implicitly and unambiguously in the priority document. For example, if a priority document discloses a specific composition, and the new application claims a broader composition (but includes the specific one as an alternative), the specific composition can claim partial priority from the earlier application.

Example of Partial Priority:

Imagine an application that claims the use of a composition defined in more generic terms (e.g., calcium salt of an active ingredient). The earlier priority document discloses a specific composition, such as a calcium salt combined with a tribasic phosphate salt.

Alternative (a): The specific composition from the priority document (calcium salt with tribasic phosphate salt) would enjoy priority.

Alternative (b): The broader, more generic composition (e.g., any acid form or salt) would not be entitled to the earlier priority date but could be based on the filing date of the new application.

This situation leads to the application being conceptually divided into two parts:

One part, corresponding to the specific composition (covered by the priority date),

And the other part, which represents the broader claim and is not entitled to the same priority date.

3. Mosaic Priority and Limitations

A significant rule in partial priority cases is that “mosaic” priority is not allowed. This means that a European patent application cannot combine features disclosed in different earlier applications unless one application explicitly refers to the other. If two separate earlier applications disclose different features (say, feature C and feature D) without showing their combination, the combination of these features cannot claim priority from both applications. In such a case, the European application would be entitled only to its own filing date, not the earlier priority dates.

Example of Mosaic Priority:

If Feature C is disclosed in a French application and Feature D is disclosed in a German application, but the combination of C and D was not disclosed in either application, then the claim combining these two features will not be entitled to the priority of either document. Instead, the combination will have the filing date of the European application itself.

However, exceptions can occur if one application refers to the other and explicitly allows the combination of features in a manner that supports the invention's complete disclosure.

4. Legal Precedents:

G 1/15 (Partial Priority): This decision clarified that partial priority may be granted to a claim encompassing alternative subject matter, provided that the priority document discloses the subject matter directly or implicitly in a manner that would have been understood by a skilled person. The decision also emphasized that the generic "OR" claim should be carefully examined to see if the alternative subject matter was clearly disclosed in the priority document.

G 2/98 (Multiple Priorities): This decision established the principle that a European patent application could claim priority from multiple prior applications, and each part of the application could carry the appropriate priority date from its respective prior filing.

T 282/12 (First Application Rule): This case extended the principles of partial priority to situations where an applicant files multiple applications, with the priority application being the first application for those aspects of the invention that are not already disclosed in earlier filings.

5. Implications for Patent Applicants

The ability to claim multiple and partial priorities provides a significant advantage to patent applicants, especially when dealing with international filings. By correctly applying the rules of multiple priorities and partial priorities, applicants can:

Ensure broader patent protection across multiple jurisdictions,

Retain early priority dates for different parts of their invention, and

Avoid unnecessary delays by reducing the dependency on one single priority application.

However, understanding and navigating the complexities of these rules requires careful consideration, particularly in relation to how claims are structured and how earlier filings are disclosed. Therefore, applicants should seek expert legal advice to maximize their patent protection strategies.

Conclusion

Multiple and partial priorities are key concepts in modern patent law, providing flexibility for patent applicants seeking to protect their inventions across multiple jurisdictions. By claiming priority from multiple earlier applications or only parts of an invention, inventors can strengthen their patent portfolios, gain a competitive edge, and ensure that their intellectual property is well-protected. However, these concepts can be complex, and careful attention must be given to the specific details of each claim and prior application. Therefore, it’s essential to consult with patent professionals to navigate these provisions effectively and maximize the potential of your inventions.

#PatentLaw #MultiplePriorities #PartialPriority #EPO #IntellectualProperty #EuropeanPatent #PriorityClaim #MosaicPriority #IPProtection #LegalPrecedents #PatentStrategy #Gaurivandanaschoolofip #GauriWaghmare #GauriVandanaLegalServices