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Article 89 of the EPC provided that

The right of priority shall have the effect that the date of priority shall count as the date of filing of the European patent application for the purposes of Article 54, paragraphs 2 and 3, and Article 60, paragraph 2.

However, inventive step is defined in Article 56 which is not mentioned. Does that mean that for the provisions of article 56 documents published between the priority date and the filing date of a european patent application are part of the prior art?

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Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art.

At the EPO, unpublished EP applications filed before the date of filing of an application are prior art for novelty but not prior art for inventive step. The theory is that even if it is unpublished, if someone filed on "the same thing" before you did your invention is not novel. However, to be in the state of the art for purposes of a document pointing someone in the direction of your invention (inventive step) it must actually have been available to the public before your filing.

This is not the same in the US. If a reference is prior art for section 102 purposes, it is prior art for section 103 purposes.

Regarding priority date vs actual filing date -

Article 89 Effect of priority right The right of priority shall have the effect that the date of priority shall count as the date of filing of the European patent application for the purposes of Article 54, paragraphs 2 and 3, and Article 60, paragraph 2

So a proper claim of priority moves the "effective date" back from the actual fining date to the priority date. One concern is whether or not the priory claim is to a filing that really qualifies under the Paris Agreement Article 4.

Also, In the EPO's Guidelines for Examination Part G , Chapter IV paragraph-3.

Date of filing or priority date as effective date It should be noted that "date of filing" in Art. 54(2) and (3) is to be interpreted as meaning the date of priority in appropriate cases (see F‑VI, 1.2)

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  • But what if I have an application (day 1), someone publishes an article about that (day 2) and after that I file an european app. claiming priority to the first application (day 3) - then the second application has a filing date (3) and a different priority date (1), does the publication from day 2 count as prior art for inventive step for the second application even though it was after the priority date (but before the filing date)?
    – user18033
    Commented Apr 20, 2017 at 21:04
  • "for the purposes of Article 54, paragraphs 2 and 3, and Article 60, paragraph 2" - but inventive step is art. 56, so does the priority date not count as the filing date for inventive step?
    – user18033
    Commented Apr 20, 2017 at 21:22
  • In the EPO's Guideline for Examination Part G , Chapter IV paragraph-3. Date of filing or priority date as effective date It should be noted that "date of filing" in Art. 54(2) and (3) is to be interpreted as meaning the date of priority in appropriate cases (see F‑VI, 1.2). . . .
    – George White ♦
    Commented Apr 20, 2017 at 21:27
  • Found it too after you mentioned the guidelines in chapter VI 1.1 and 1.2 which seems to be even clearer. If you include those in the answer I'll accept it. Thanks for the help!
    – user18033
    Commented Apr 20, 2017 at 21:41
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Art. 89 EPC states, that the right of priority has an effect similar to replacing the expression "date of filing" in Articles 54(2), 54(3) and 60(2) to the expression "date of priority".

The Art. 56 EPC does not disclose anything filing date related. It just refers to documents within the meaning of Art. 54(3) EPC.

Art. 56 EPC:

An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step.

That is, Art. 56 refers to the documents/applications

  • with filing dates (or priority dates - Art. 89 applied on Art 54(3)) prior to

  • but with a publishing date after

the filing date (or priority date- Art. 89 applied on Art 54(2)) of an application.

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