EP 2 395 902 B1 relates to a drive system for driving an endoscope in response to user input forces along multiple degrees of freedom simultaneously and in a facilitated manner.
EP 2 395 902 B1 was filed under the PCT and published as WO 2008/070556 A1.
No less than 8 priorities were claimed starting with P1 filed 01.12.2006, P2 filed on 30.03.2007, the remaining priorities were all filed on 28.11.2007.
Brief outline of the case
The OD held that claim 1 as granted was lacking N over E3=WO 2007/002545 . The OD considered that the priority P1=US 872155 P, was not transferred to the subsequent applicant before the filing the EP application and hence not validly claimed.
E3 was published after the filing date of the earliest priority P1 but before the filing dates of the later priorities claimed.
The OP decided maintenance according to AR3.
Both proprietor and opponent appealed.
The board held that claim 1 as granted lacked N over E3.
The same applied to AR1-3.
The patent was maintained according to AR4.
Decision of the board on the validity of the priority
In view of the publication date of E3 it was important to decide whether the priority was validly claimed or not.
Rebuttable presumption
According to G 1/22 and G 2/22 there was a strong, rebuttable presumption that the applicant of the PCT application was entitled to claim the priority of P1.
The opponent challenged this entitlement.
However, in support of its objection, the opponent merely argued that the proprietor had not conclusively shown that the right to claim priority from P1 had been validly transferred from the applicants of P1 to the applicant of the PCT application, which was different, prior to the filing of the PCT application.
The opponent did not put forward any specific fact supporting serious doubts in this respect.
Even if, as argued by the opponent, the evidence submitted by the proprietor could be considered as only proving the transfer of the priority right derived from P2 and not from P1, this would not in itself rebut the presumption that the priority right derived from P1 was also validly transferred, possibly in a different way.
On the basis of G 1/22 and G 2/22, the priority was validly claimed.
Art 87(1,b)
As already pointed at in the board’s communication under Art 15(1) RPBA, the board held that E3 was also filed by the proprietor with two inventors/applicants of P1, also named as inventors in E3.
Since E3 was filed before P1, P1 could not be the “first application” within the meaning of Art 87(1) for the subject-matter disclosed in E3, with the consequence that no priority can be claimed from P1 for that subject-matter.
Consequence
E3 discloses the subject-matter of claim 1 as granted and of claim 1 of AR 1-3.
For this subject-matter, therefore, no priority can be claimed from P1, and E3 is novelty-destroying prior art under Art 54(2).
In its communication under Art 15(1) RPBA, the board added that the same conclusion applies to priority rights claimed for that subject matter from P2 to P8 for that same matter.
Comments
The case is interesting since, in spite of the opponent not being able to rebut the presumption of validly claiming priority according to G 1/22 and G 2/22, the priority was not validly claimed as P1 was not the first invention.
E3 claimed a priority from 22.06.2005. In the present case, only P1 and P2 fell within the 12 months period starting 22.06.2005. All 6 priorities dated 28.11.2007 would have been outside the 12 month period.
This explains why the priority of E3 could not be claimed in the present application/patent, but the applicant/proprietor overlooked the fact that P1 and E3 had the same subject-matter.
On the procedure
It is surprising that E3 was overlooked, and hence not mentioned on the ISR established by the EPO. The classification units searched are the same for E3 and the application/patent. For E3, the ISR was also established by the EPO.
The applicant was the same, and two of the inventors were mentioned in the patent at stake and in E3. In the ISR E3 should have appeared under “L”.
Comments
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