Under the EPC applicants have the possibility to file missing parts while keeping the same filing date provided the missing parts are completely contained in the priority application.
A similar possibility exists under the PCT, however there is a slight difference, in the sense that under the PCT the missing parts must be completely contained in the priority application(s) from which priority is claimed upon filing. The EPC provisions do not appear to have this requirement.
As a result an applicant may be allowed (after having filed his application) to first add an additional priority claim and then file "missing parts" of the application based on this later added priority claim.
During a seminar of the EPI on the PCT earlier today, this difference was brought under the attention to a speaker from the EPO. Although he more or less agreed with the person making this comment that adding "missing part" in this way probably contravenes Article 123(2) he admitted that it is not forbidden under the EPC per se.
This appears to be one of the loopholes in the law which one day will be solved either by case law or revision of the law.
More snippets from this seminar to come....
20/11/2009
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EPC Guidelines A-II, 5.4.1 clearly indicates that the priority claim which forms the basis for a request under Rule 56(3) (to add late filed parts of the description of drawings based on the claimed priority), must have been in existence no later than the date of the Rule 56(3) request. This means that it may have been added after filing under Rule 52.
ReplyDeleteHowever, given the rarity of later filed priority claims under Rule 52 and the extreme rarity of Rule 56(3) requests, it is unlikely that these two events will occur in combination for the same application any time soon.