The basic test to determine whether a claim is entitled to the date of a priority document is, as far as the requirement of "the same invention" is concerned (see F‑VI, 1.3(iv)), the same as the test for determining whether or not an amendment to an application satisfies the requirement of Art. 123(2) (see H‑IV, 2). That is to say, for the priority date to be valid in this respect the subject-matter of the claim must be directly and unambiguously derivable from the disclosure of the invention in the priority document, also taking into account any features implicit to a person skilled in the art in what is expressly mentioned in the document (see G 2/98). As an example of an implicit disclosure, a claim to an apparatus including "releasable fastening means" would be entitled to the priority date of a disclosure of that apparatus in which different embodiments of releasable fastening elements such as a nut and bolt, a spring catch and a toggle-operated latch are shown.
It is not necessary that the subject-matter for which priority is claimed be found among any claims in the previous application. It is sufficient that the documents of the previous application taken as a whole "specifically disclose" such subject-matter. The description and any claims or drawings of the previous application are, therefore, to be considered as a whole in deciding this question, except that account is not taken of subject-matter found solely in that part of the description referring to prior art, or in an explicit disclaimer.[Art. 88(4); ]
The requirement that the disclosure must be specific means that it is not sufficient if the subject-matter in question is merely referred to in broad and general terms. A claim to a detailed embodiment of a certain feature would not be entitled to priority on the basis of a mere general reference to that feature in a priority document. Exact literal correspondence is not required, however. It is enough that, on a reasonable assessment, there is in substance a disclosure of the same subject-matter of the claim.
A disclaimer which is allowable under Art. 123(2) (see H‑V, 4.1 and H-V, 4.2) does not change the identity of the invention within the meaning of Art. 87(1). Therefore, such a disclaimer could be introduced when drafting and filing a successive European patent application, without affecting the right to priority from the first application not containing the disclaimer (see G 1/03, G 2/03 and G 2/10).
Date retrieved: 30 December 2018
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EPO Guidelines - F The European Patent Application
EPO Guidelines - H Amendments and Corrections
XGL H V 4.1 The subject-matter to be excluded is not disclosed in the application as originally filed (so-called undisclosed disclaimers)