Obtaining an EP Patent - “Published after but filed before”: dealing with this kind of prior art

06 Únor, 2025

“Published after but filed before”: dealing with this kind of prior art

A patent application having a filing date earlier than the filing date of another application in a same jurisdiction yet published on or thereafter may be considered as prior art. The qualification of prior art, as well as what is opposable (i.e. novelty and/or obviousness), will depend on the jurisdiction.

In Europe, this category of prior art is commonly called a “54(3) document” as it is defined under article 54(3) EPC.

The EP standpoint

Mains points to take into account is that in Europe auto collision is possible, but the document cannot be used for obviousness considerations.

	EP Patent Law
What kind of publication should the document be?	An EP publication (patent or application) or a WIPO publication (designating EP*)
In case of a WIPO publication, should the document be in English?	No.
In case of a WIPO publication, should the conditions for entry into the national/regional phase be fulfilled?	Yes: the PCT applicant must have paid the required filing fee under Rule 159(1)(c) EPC and have supplied the PCT application to the EPO in English, French or German.
Should the document be “from another”?	No. The patent document can name the same inventor(s) (i.e. an auto-collision is possible).
Does the date of foreign priority counts?	Yes.
Is the document prior art when considering novelty only?	Yes.
Exceptions?	No exceptions

As an applicant, what should you do?

When you’re facing up with a conflicting application, always keep in mind that if such document is prior art in other jurisdiction, it may not be in Europe. The reverse is also true. Thus, the impact of such document on patentability may be completely different within the same patent family.
Therefore, be careful and always check the conditions listed in the table above to figure out if such document is actually a prior art. In the affirmative, do not forget that in Europe, it will be considered for novelty only, not for the inventive step.

References