Thursday, 13 August 2015

Partial Priority - Questions for the Enlarged Board

Back in January I wrote about an appeal case at the EPO where a referral to the Enlarged Board on the question of partial priorities was going to be made. The Board in T 557/13 has now finally issued their decision, which is available here. Although it has taken them over six months to get there, I can see why it has taken so long, since the decision runs to 64 pages and is very comprehensive (as you might expect for such an important case).

In brief, European patent EP0921183 (which, by the way, expired in June this year) was opposed for lack of novelty, among other things. The opposition division concluded that claim 1 as granted was a generalisation of a more specific disclosure in the priority document, which had also published as an EP application. The priority document therefore became prior art under Article 54(3) EPC. Since, in the opposition division's view, the granted claim did not give rise to the claiming of a limited number of clearly defined alternative subject matters (referring to G 2/98), the claim was not entitled to priority and lacked novelty over the priority document.

On appeal, the patent proprietor argued that the claim was novel because a divisional application could not have a different priority date from its parent, backing its arguments up with various documents, which included a post from this blog (mentioned as D22 in the decision). The proprietor also cited the FICPI memorandum that was referred to in G 2/98, and proposed various questions to be referred to the Enlarged Board (which were mentioned in my previous post). The Board indicated that the issue of novelty might hinge on whether a patent could validly claim a right of priority when claiming more generically than a priority disclosure, and drew the parties attention to decision T 571/10, which is quite clear on the subject.

Following oral proceedings, which were held on 17 December 2014, the Board decided that it would refer questions to the Enlarged Board, the form of which were to be decided. This decision now sets out the reasoning behind the questions being referred. As the Board states at point 8.4 of the reasons, "the decision on novelty of the subject-matter of Claim 1 may depend on what approach is adopted in assessing entitlement to partial priority for a generic "OR"-claim. The concrete question to be resolved here is whether Claim 1 enjoys partial priority to the extent that the use of the product of Example 1 as disclosed in D16 is encompassed by the more generic definition of Claim 1, rather than being spelt out in it". In my view, this is the core of the issue, and one that has been much debated here and elsewhere. The question is in effect one of whether it is correct to take a broad or narrow view of the "limited number of clearly defined alternative subject-matters" as defined by G 2/98.

The Board goes into a lot of detail discussing the background to the issue of claiming partial priorities. They refer to the FICPI memorandum, and note that it was "an essential element in the process of drafting the EPC provision allowing the claiming of multiple priorities for one and the same claim which was finally adopted" (point 11.7). This seems to disagree with comments from some who have accused me of putting too much emphasis on the memorandum. In my view the memorandum is key, and has to play a very important role in resolving the issue if G 2/98 is to be followed at all (which, of course, it might not be). The Board also discuss the conflicting case law of the EPO, as well as two relevant judgments from the England and Wales High Court (Nestec v Dualit and HTC v Gemalto) where partial priority made an appearance. All of the issues should already be familiar to readers of this blog, so I won't go into the details again.

In a preamble to the actual questions themselves, the Board outline the main issues and comment on the fundamental importance of the point of law. At point 17.2.2 the Board states:
"The right of priority being one of the cornerstones of the patenting system, the Board considers that clarification of issues arising in the present connection is of fundamental importance. As argued by the appellant, the way in which entitlement to priority is assessed in cases of generic "OR"-claims is of great practical importance for claim drafting and filing strategies. "
The Board refers to another pending appeal case, T 624/14 concerning EP2157457, where a request for a referral has also been made. They also draw attention to two further publications, one of which is an article I wrote (in my real life persona) with Renaud Fulconis for the CIPA journal in December 2013 (cited as D30 and available in preprint form here), setting out the two opposing views on partial priorities. The Board mention that the jurisprudence before and after G 2/98 has not been applied uniformly in the assessment of partial priority for generic "OR"-claims, resulting in two divergent approaches developing. Clarification from the Enlarged Board is therefore needed. Given the fundamental nature of the issue, the questions have been formulated in broader terms than those suggested by the parties, and are as follows:
1. Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic "OR"-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document? 
2. If the answer is yes, subject to certain conditions, is the proviso "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" in point 6.7 of G 2/98 to be taken as the legal test for assessing entitlement to partial priority for a generic "OR"-claim? 
3. If the answer to question 2 is yes, how are the criteria "limited number" and "clearly defined alternative subject- matters" to be interpreted and applied? 
4. If the answer to question 2 is no, how is entitlement to partial priority to be assessed for a generic "OR"-claim? 
5. If an affirmative answer is given to question 1, may subject-matter disclosed in a parent or divisional application of a European patent application be cited as state of the art under Article 54(3) EPC against subject-matter disclosed in the priority document and encompassed as an alternative in a generic "OR"-claim of the said European patent application or of the patent granted thereon?
The questions posed look very comprehensive to me, and very thoroughly thought out. I suspect the answer to them is not going to be a straightforward "no" to question 1, as that would be too easy (although would seem to me to be the correct one; see here for my reasons why). The key part is likely to be question 3, which is where the FICPI memorandum will come into play, unless the Enlarged Board decides to throw out that part of G 2/98 and start afresh (which they can do).

What happens next is the interesting part. I suspect the EPO will invite observations on the questions being referred, and then in a year or two we should get the answer. Let's hope it's the right one.

See further analysis from PatLit here and the IPKat here.

Friday, 7 August 2015

Opinions and Revocation - JCB is the Guinea Pig

Following my earlier posts here and here about the new provision under section 73 of the UK Patents Act for automatic revocation following an opinion, I have noticed that the first step has been taken today in relation to Opinion 25/14. As mentioned in my post here, this opinion found GB2497956 to lack novelty over a patent cited by the requester. The period for requesting a review expired on 11 May 2015 with no request being filed. After taking nearly three months to think about it, the UK IPO has now written to the proprietor, stating the following:
"Under Section 73(1A) your patent has been reviewed by a Deputy Director on behalf of the Comptroller who considers that claim 1 is not novel in view of US 3485037 and also not inventive, in particular in view of US 2007/175209 and EP1439310.
Before beginning revocation proceedings, you are invited to amend your patent and/or to comment on the citations before [7 October 2015]."
This is the first time the new provision under section 73(1A) has been used to initiate action. The proprietor, JC Bamford Excavators Limited, now has two months to decide what to do to try to avoid getting their patent revoked. I will, of course be keeping a close watch to see what happens.

Saturday, 25 July 2015

An Analysis of TKDL at the EPO

Following my recent post on the IPKat here about (at least partly) false claims made by the Indian government regarding the relevance of the Traditional Knowledge Digital Library (TKDL), I thought I would have a good look at a bigger sample of the recent claims that have been made. These are listed on the TKDL website here as 'major milestones'. Another list is available here on the TKDL website indicating all instances where the TKDL has been used in third party observations, but without any claims to the relevance of the observations.

The major milestones page claims that things have happened, such as applications being refused or withdrawn, "based on the TKDL evidences". Based on the cases I have seen so far, these claims have turned out not to be true. The recent announcement by the Indian government to have "foiled an attempt by consumer goods giant Colgate-Palmolive to patent a mouthwash formula containing herb extract by citing ancient texts that show it was traditionally used in ancient medicinal practices" was just one recent example, as I showed in my recent post.

I wondered whether there had been any cases where the TKDL had been actually relevant in determining the outcome of an application. The only way to find out was to look at each of the cases and see what actually happened. The table below, which is derived from the TKDL's own list, shows for each European application in the list a summary of what happened, and whether the claim is true or false (or perhaps somewhere inbetween). You don't need to take my word for it though, as links are provided in each case for verification if needed.

Where I have indicated that the TKDL claim is false, this is based on there being no objections raised by the examiner in relation to the TKDL documents or, in some cases, that the examiner has specifically stated that the references were not as relevant as those already cited, and therefore could not possibly have made any difference. Where I have indicated that the claim is true, this is where either the examiner has specifically raised objections and/or the applicant has responded to the references by amendment. Whether any subsequent deemed withdrawal has anything to do with the TKDL citations is, of course, unknown, but I have given the TKDL the benefit of any doubt where any objections have been raised during prosecution.

TKDL Claim
Evidence from EP Register
True or False?
BASF Beauty Care Solutions France SAS, France has amended the claims of the application no. EP2157966 for "MC-1R, MC-2R, and/or [mu] opioid receptors simulation" based on the TKDL evidences.
No mention of TKDL evidence in summons to oral proceedings dated 9 Jan 2015. Applicant responded to TKDL evidence with no amendments.
Based on TKDL evidences, MORINAGA MILK INDUSTRY CO., LTD. 33-1, Shiba 5-chome Minato-ku, Tokyo 108-8384 / Japan has amended the claims of application no. EP1941899 for "Agent for promoting glucagon-like peptide 1 secretion, food or drink for promoting glucagon-like peptide 1 secretion, agent for inhibiting postprandial increase in blood sugar level and food or drink for inhibiting postprandial increase in blood sugar level" and then the application was deemed to be withdrawn.
Last examination report dated 8 Jan 2015 cites two documents, neither from TKDL. No response filed, application deemed withdrawn.
Based on TKDL evidences, Phenolics, LLC, P.O. Box 2439, 846 San Carlos Avenue, El Granada, CA 94108-2439 / United States has amended the claims of application no. EP1572219 for "Efficient method for producing compositions enriched in total phenols" and then the application was deemed to be withdrawn.
TKDL observations mentioned in examination report dated 13 Jan 2011, but documents already cited by examiner used in novelty/inventive step objections.
Based on the TKDL evidences, Application no. EP2328598 (Phenolics, LLC United States) for "Novel compositions containing isolated tetrameric type a proanthocyanadin and methods of use and manufacture", is deemed to be withdrawn.
Inventive step objection based on document D1 cited by examiner in last examination report dated 7 March 2014. TKDL observations also mentioned. Application subsequently deemed withdrawn due to no renewal fee payment.
TRUE (partially)
Based on the TKDL evidences, application no. EP2464363 (M/S Medasani, Munisekhar / India) for "Natural extract from whole banana fruit (Musa Spp.)", is refused.
Decision to refuse dated 20 March 2015 based on objections in examination report dated 17 March 2015, cites document D8 (WO 2004/069143) as main reference for novelty & inventive step, D10-12 & D18 used in inventive step. None of cited documents from TKDL.
Based on the TKDL evidences, Application no. EP2689806 (Colgate-Palmolive Company/ United States of America) for "Oral compositions containing extracts of myristica fragrans and related methods", is deemed to be withdrawn.
Last examination report dated 6 October 2014 cites document not from TKDL as main reference.
Avon Products / U.S. has amended the claims of the application no. EP1827362 for "Compositions and methods of their use for improving the condition and appearance of skin" based on the TKDL evidences.
Examination report dated 7 Aug 2014 cites TKDL observations in novelty & inventive step arguments. Applicant subsequently amends claims.
Based on the TKDL evidences, Nestec S.A. / Switzerland have withdrawn their Application No. EP2243383 for "A method and composition for nutritionally improving glucose control and insulin action."
Summons to oral proceedings dated 1 Aug 2014 specifically mentions third party observations not being more relevant than documents already on file.
Based on the TKDL evidences, Application no. EP2266586 (Lifeline Nutraceuticals Corporation 6400 South Fiddler's Green Circle, Suite 1970 Englewood, CO 80111 / United States) for "Compositions and method for alleviating inflammation and oxidative stress in a mammal", is deemed to be withdrawn.

Application was closed on 18-Mar-15.
TKDL evidence mentioned in last examination report dated 30 April 2014, but examiner cited documents used in novelty & inventive step objections.
Nestec S.A. Avenue NestlĂ© 55 1800 Vevey / Switzerland has amended the description of the application no. EP1750651 for "Composition for improving skin, hair and coat health containing flavanones" based on the TKDL evidences.
Novelty objections raised in last examination report based on examiner cited documents and TKDL evidence. Examiner also raises novelty objection citing orange juice with pulp as prior art.
 TRUE (partially)
M/S Indena S.p.A. / Italy has amended the claims of the application no. EP2046324 for "Treatment and prevention mucositis by anthocyanidin derivatives.
Novelty & inventive step objections raised in last examination report based on 35 documents cited by examiner. TKDL evidence not used.
N/A (no claim made)
Based on the TKDL evidences, Application no. EP1558271 (Metaproteomics, LLC / United States) for "Compositions that treat or inhibit pathological conditions associated with inflammatory response", is deemed to be withdrawn.

Application was closed on 09-Jan-15.
Examiner considered claims to be new and inventive over cited documents and TKDL documents in examination report dated 3 March 2014. Minor clarity objections raised. No response filed, application deemed withdrawn.
Based on the TKDL evidences, Application no. EP2419508 (Somalabs, Inc., 40 Allen Road, South Burlington, VT 05403 / United States) for "Method for the induction of a reward response by modulation of dopaminergic systems in the central nervous system", is deemed to be withdrawn.

Application was closed on 12-Nov-14.
TKDL observations used in examination report dated 7 March 2014 for inventive step argument. Application then deemed withdrawn due to missing renewal fee.
Unitika, Ltd./ Japan has amended the claims of the application no. EP2226071 for "Composition for oral administration" based on the TKDL evidences.
Novelty objection in examination report dated 20 Feb 2015 based on document cited by international examiner. TKDL evidence not mentioned.
Based on the TKDL evidences, Unigen, Inc. / US, have amended the claims of application no. EP1881839 for "Compositions of Bakuchiol and methods of making the same" and then the application was withdrawn.

Application was closed on 12-Nov-2014.
Intention to grant issued 17 Feb 2014. No response filed, application deemed withdrawn. TKDL references stated to be not relevant in examination report dated 11 March 2010.
Laboratoires Expanscience / France has amended the claims of the application no. EP2506724 for "Vigna unguiculata seed extract and compositions containing the same" based on the TKDL evidences.
Inventive step objections in examination report dated 12 March 2014 based on TKDL evidence. Claims amended in response.
New Chapter, Inc. / US has amended the claims of the application no. EP2435057 for "Compositions and methods for modulating lipid composition" based on the TKDL evidences. Application was refused on 17-Jun-2015.
Amendments made in response to documents cited by examiner. Examination report dated 7 March 2014 indicates that "third-party observations has been taken into account", but novelty & inventive step objections based only on examiner cited documents. Reasons for refusal in summons to oral proceedings dated 10 March 2015 made no mention of TKDL references.
Mimozax Co., Ltd. , 4291-1, Miyauchi Hatsukaichi-shi, Hiroshima 738-0034 / Japan has amended the description of the application no. EP2052731 for "Composition for preventing and/or treating itching containing component originating in the bark of tree belonging to the genusacacia." based on the TKDL references.
No third party observations have been filed.
Nanyang Polytechnic/ Singapore has amended the claims of the application no. EP2416793 for "A plant extract comprising statins and preparation techniques and uses thereof" based on the TKDL evidences.
Search opinion dated 25 July 2013 invited applicant to comment on TKDL references. Applicant responded on 6 June 2014 with amendments.
Based on the TKDL evidences, Application no. EP1901701 (Ott, David M., 777 Panoramic Way, Berkeley, CA 94704 / US) for "Personal care and medicinal products incorporating bound Organosulfur groups", is deemed to be withdrawn.

Application was closed on 14-Aug-14.
Examination report dated 9 October 2013 raised novelty objections relating to examiner cited documents. Third party observations mentioned, but no specific objections raised. No response filed, application deemed withdrawn.
Based on the TKDL evidences, Application no. EP2293689 (Mars, Incorporated / US) for "Food product", is deemed to be withdrawn.

Application was closed on 04-Aug-14.
Examination report dated 22 November 2013 considered third party observations to be relevant for inventive step. No response filed, application deemed withdrawn.
Based on the TKDL evidences, Application no. EP2269598 (Metaproteomics, LLC/ United States) for "Curcuminoid compositions exhibiting synergistic inhibition of the expression and/or activity of cyclooxygenase-2", is deemed to be withdrawn.

Application was closed on 18-Jul-14.
Search opinion dated 23 May 2011 cited TKDL references mentioned in third party observations, raising novelty objections based on these. Subsequent deemed withdrawal due to non-payment of renewal fee.
Based on the TKDL evidences, Application no. EP1993522 (Kao Corporation 14-10, Nihonbashi-Kayabacho, 1-chome Chuo-ku Tokyo 103-8210 / Japan) for "Resveratrol and/or grape leaf extract as i.a. endurance improver, anti-aging agent, muscle strength improver", is deemed to be withdrawn.

Application was closed on 23-May-14.
Examination report dated 29 March 2011 mentioned third party observations, but considered documents already cited by examiner to be more relevant. 
Universiti Putra Malaysia, UPM Serdang, 43400 Selangor Darul Ehsan / Malaysia has amended the claims of the application no. EP2349302 for "Cardioprotective effects of nutraceuticals isolated from nigella sativa seeds" based on the TKDL evidences.
Search opinion dated 10 July 2012 indicated that TKDL references were not considered to be as relevant as examiner cited documents. 

Out of a total of 23 cases where a claim has been made that something happened "based on the TKDL evidences", 15 turn out to be completely false. There are no cases where an application has been refused based on TKDL evidence, but several where an application has lapsed for one reason or another after TKDL evidence has been submitted. It looks to me like the TKDL is a potentially useful source of prior art in limited circumstances, but is nowhere near as significant as it is made out to be. Perhaps the Indian government could be a little more honest and make claims where they are actually justified.

Friday, 10 July 2015

Don't let your patent go up in smoke

Renewal fees are payable to the UK IPO on GB and EP(UK) patents each year, by the end of the month in which the anniversary of the filing date falls (rule 37). If this is missed, an extra six months is allowed for paying the fee, with surcharge (section 25(4)). If, after this period passes, the renewal fee is still not paid the patent lapses. It is possible to have such a lapsed patent restored, but only if it can be shown that the proprietor unintentionally failed to pay the fee (section 28). This is usually a fairly low hurdle to get over, and it is quite common for proprietors to be able to get their lapsed patents restored provided they can show that there was an underlying intention to keep it. An important point to note, however, is that although anyone can pay a renewal fee it is the proprietor who must be shown to have the intention to pay.

EP1409166, relating to processing of waste material, and originally applied for in the name of Strumat Limited, was granted to Globally Greener Solutions Limited in 2010, after recordal of a transfer was made during prosecution. The patent then lapsed in the UK due to failure to pay the renewal fee that was due by the end of July 2012. Unfortunately, as it turns out, the transfer to GGSL was apparently made by one of the directors of Strumat without the permission of the others. Following dissolution of GGSL, which seems to be connected to a large fire at their premises involving 5000 tonnes of stockpiled waste material, and which resulted in two of GGSL's directors being jailed for failure to comply with environmental regulations, ownership of GGSL's assets passed to the Crown, under section 1012 of the Companies Act 2006. As an aside, very large fires at recycling plants seem to have been quite a common occurrence recently, a few examples being in Linconshire, Salford, Wrexham, Rainham, Swindon, Melton and Smethwick (the large plume of smoke from which was visible from my office).

To return to the issue in question, since the Crown was the proprietor at the time the patent could have been renewed, on the face of it the intention that would count regarding whether the patent could be renewed would be theirs. Unfortunately, the Crown makes no effort to maintain patents that are acquired as a result of them being bona vacantia, so the intention test would never be met. This was clearly a problem for Strumat, who claimed that the application had been transferred fraudulently and should therefore never have been recorded as being in the name of GGSL. They applied under section 37 to have the question of entitlement resolved by the comptroller, but the comptroller declined to deal with the issue (see the decision here), as it was one that related only to non-patent law issues. Strumat then went to Court, and were granted a Vesting Order which ordered:
the Patent Number EP02747559 granted as EP1409166 be and is hereby vested in Strumat Limited for all the estate and interest therein which immediately prior to its dissolution were vested in Globally Greener Solutions Limited”.
Strumat argued in their application for restoration that this meant they had always been the proprietor and it was therefore their intention to maintain the patent that counted. The hearing officer disagreed because it was quite clear that the order took effect as of its date, and was not retrospective. As a result, only the intention of the Crown could be relevant, and they had no intention to maintain the patent. The application for restoration therefore had to be refused (see decision BL O/248/15).

The case is quite an unusual one, but does suggest at least one lesson to be learned, which is to keep an eye on your own patents if they are important to you. If the issue had been spotted earlier, which it could easily have been (the transfer took place in 2007, long before the patent was granted), the patent might have survived. Getting others to look after them might save you some time and effort, but it's always worth doing a quick check now and then to make sure your patent is not about to spontaneously combust.

Wednesday, 17 June 2015

Opinions & Revocation - Continued

Earlier this year I wrote about the first couple of Patent Office opinions under section 74A that issued under the new provisions of section 73(1A)&(1B), where the comptroller now has the option of initiating revocation if an opinion finds a patent to lack novelty or inventive step.

The question I had at the time was how the comptroller would decide where initiating revocation proceedings would be justified. The two opinions issued so far seemed to me to be fairly "clear cut" (in the words of the Office's own guidance on the matter), since both found claim 1 of the patent to lack novelty over a prior publication. I therefore expected that we should see the first action to initiate revocation shortly after the 3 months period for requesting a review expired on the first one, which was in April (no review was requested).

After a couple of months to think about it, the Patent Office has now written to the proprietor in a letter dated 12 June that states in part:
"Whilst opinion [23/14] did conclude that your patent was invalid the comptroller does not consider it appropriate to initiate revocation proceedings against your patent.  
You should note that the decision not to initiate action under section 73(1A) does not alter or set aside the conclusion in the opinion. You may still wish to amend your patent."
The opinion, which was written by a senior examiner, was quite clear in finding that claim 1 lacked novelty over a prior published Chinese utility model publication. This makes me wonder what it would take for the comptroller to decide when a case met the "clear cut" criterion. How clear cut does it have to be? There is no real further guidance in the Manual of Patent Practice, which simply states that the group Deputy Director (DD) "should consider whether action under section 73(1A) is necessary. Action under this section should only be initiated if the DD considers that the patent is clearly invalid due to lack of novelty or inventive step. The opinion should be considered but the DD is in no way bound by it". Based on this, it appears that the comptroller could decide not to take action for any reason at all, however subjective it might be. This does not sound to me like a good way to implement the new provisions.

Perhaps we will know more when a decision is made regarding the second opinion that resulted in a finding of invalidity, which should issue soon. The situation at the moment does appear to be in need of some clarification.

Friday, 17 April 2015


Those of you who are already up to date on the issues surrounding partial priority and poisonous divisionals (the latest state of play on which is summarised here) can safely ignore this post. Others who have a more masochistic disposition may wish to read on.

The issue of poisonous divisionals was first raised by Malcolm Lawrence in 2011 a few years ago while he was at HLBBshaw (since rebranded as Avidity). The original paper on the subject was published in issue 2/11 of epi information (which is available here). It has since prompted a lot of discussion, mostly among patent professionals in Europe. I have written about it a few times over the past few years, and have proposed a general solution that is in line with two decisions from the EPO Boards of Appeal. Since the latest development of a referral to the Enlarged Board, there has been nothing further to note on the subject, as we can now wait for the questions to be raised and then answered by the Board before we see what can or should be done about the issue. Or so I thought.

Mr Lawrence, however, thinks there is a lot more to say on the subject, and to prove it has written another article in this month's epi information (available here). This runs to just over 12 pages, and is (as usual) not an easy read. I would not bother to comment, as it doesn't seems to be actually saying anything new, but it does make lots of references to an article I co-wrote in the December 2013 issue of the CIPA journal (a preprint copy of which is available here; the relevant points made are also detailed in these two posts: here and here), which put forward opposing viewpoints on the partial priority issue in light of G 2/98. In essence, the issue boils down to whether you take a narrow or a broad view of the requirement stated in reason 6.7 of G 2/98, which states that multiple priorities are allowed "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters". The narrow view is that there needs to be basis for each of the alternative subject-matters, in a similar way as this would be required if the claim were to be split up into separate claims, and that a limited number would probably not apply to continuous ranges. This view inevitably gets bogged down in all kinds of complications about disclaimers and what is actually disclosed in the as-filed application. The broad view (being my own view), which takes support from the FICPI memorandum cited in G 2/98, is that it doesn't make sense to get involved with basis for amendments and disclaimers because no amendment is necessary, which I pointed out in my earlier post about imaginary claims here. As I stated in my article:
"The only criteria required would be: i) that the claim scope entirely encompasses the priority disclosure; and ii) that there is no issue regarding public disclosures between the priority date and the date of filing of the application. Provided such criteria are met, and of course all other requirements of the EPC are met for the claim scope (in particular Article 83 EPC, as the broader scope would need to be justified by the application as a whole), the validity of a partial priority would defuse any possibility of the priority application, if published, becoming Article 54(3) prior art. This is because the published priority application would not be prior art for the portion of the claim scope having a valid claim to priority, while the rest of the scope of the claim would inevitably be novel. It must be emphasised, however, that this is only applicable when there are no intervening public disclosures within the scope of the later broader claim but outside of the scope of the earlier disclosure, since the only solution to this would be to amend the scope of the later claim."
To me, this seems pretty straightforward. Provided these criteria are met, the issue about poisonous priority simply goes away, and should never have been an issue in the first place. Mr Lawrence, however, seems to think otherwise, and apparently disagrees with me, stating in footnote 33 to his article (he is very keen on footnotes; there are 62 in all) that the above solution is not correct, but fails to explain how. He also considers that too much weight is attached to the FICPI memorandum in my article (see point 1.1.5), but again fails to explain why this is wrong, other than offering an assertion. He goes on to provide some examples, one of which is illustrated using a hypothetical chemical case (see the figure and table on the right, taken from page 29 of the article). Why it has to be chemicals is a bit beyond me, as the point would seem to be the same with any numerical values. It then all gets a bit complicated, with lots of talk about different domains, targets and missiles, which all seem to be deliberately designed to confuse the reader. While there might be a valid point in there somewhere, I'm afraid I am currently at a loss to see how he has shown that my general solution is wrong. The concluding remarks in the article, referring to "challenging algebraic thinking" suggest that the author thinks the issue is indeed a lot more complicated that I might have thought. I cannot see how this is the case, but perhaps I'm just not clever enough. Can anyone illuminate further?

Thursday, 19 March 2015

Time-Lapse IVF & Article 53 revisited

I wrote a while back about a journal article and subsequent opposition to European patent EP2430454, which claims a method of assessing competence of a human embryo through measurements of time intervals between the first few cell divisions (an illustration of cytokinesis is shown on the right, taken from this web page). The opposition, filed jointly by the European Society of Human Reproduction and Embryology and the authors of the journal article (one of whom happens to be a European Patent Attorney), argued that the patent claimed a diagnostic method that was excluded under Article 53(c) EPC. The problem with this, as I explained at the time, was that the Enlarged Board of Appeal determined in G 1/04 that for a claim to fall within the Article 53(c) exclusion (which at the time was Article 52(4)), it required all of the following features to be present:
(i) the diagnosis for curative purposes stricto sensu representing the deductive medical or veterinary decision phase as a purely intellectual exercise,
(ii) the preceding steps which are constitutive for making that diagnosis, and
(iii) the specific interactions with the human or animal body which occur when carrying those out among these preceding steps which are of a technical nature.
Step (i) of the requirements is clearly missing from the claimed invention, so it seemed fairly clear to me at the time that the opposition would inevitably fail, for the obvious reason that an opposition division would not make a decision that was clearly contrary to a decision of the Enlarged Board.

Following a response from the patent proprietor and a further response from the opponent, the opposition division has now decided to hold oral proceedings at 09:00 on 30 November 2015 at the EPO in Munich (which will be open to the public). The proceedings are expected to last two days.

The opponent's main argument is explained in my earlier post here, and is set out in their opposition here, as well as in the journal article here (to which I responded in a letter in the same journal here, to which the authors responded here, all of which are mentioned in the opposition proceedings as document D12). The opponent has, however, since then expanded on their reasoning as to why they consider the exclusion should apply. Their letter explaining this is available here on the EP register. Some of the argumentation is unusual, to say the least. In response to the argument that G 1/04 required there to be a diagnosis for curative purposes, the opponent has stated:
We accept that these requirements might possibly be inferred from opinion G-1/04. However, to the extent that that may be the case, we respectfully submit that the Enlarged Board erred in suggesting these requirements and we ask the opposition division to hold that these are not in fact requirements for a claimed method to be to an excluded method of diagnosis.
They then go on to explain why G 1/04 was wrong in deciding that a diagnosis would need to be made for curative purposes. In support of this, they have obtained signed statements from 29 physicians across Europe, who have all stated that there can be a medical diagnosis in a human subject without that condition being a disease condition, and even if no curative treatment is known.

The opponent seems to acknowledge that their chances of success are slim, as they then go on to state that "Whichever way you decide, an appeal will almost certainly be filed, and at the appeal stage we fully expect that a referral to the Enlarged Board will be sought. Addressing the Art. 53 EPC point now thus offers to expedite the final disposition of the opposition". How they think a referral to the Enlarged Board would be justified, given the decision in G 1/04, is beyond me but they are of course welcome to have a go. I would guess that any question would have to be along the lines of whether a "diagnosis for curative purposes" requires there to be a condition for which it is possible to determine a treatment.

For what it's worth, my prediction is that on 30 November the opposition division will decide to reject the A53(c) ground. If the opponent appeals the decision, the Board of Appeal will then, after about 2 or 3 years, decide to dismiss the appeal on the grounds that G 1/04 was quite clear on this point, and will not refer any question to the Enlarged Board. The patent might, however, be revoked on the more conventional grounds anyway, so this issue will probably not be up for discussion if the patent does not survive the novelty and inventive step attacks.

UPDATE 20 March 2015: Now that the summons itself has appeared on the register (here), it appears I was jumping the gun a bit in originally saying that the OD would only be considering the A53(c) objection at the summons. They will in fact be considering all grounds of opposition raised. The post above has consequently been edited a bit compared to the original version published yesterday. Interestingly, the OD will also be considering the additional ground of A53(a) of their own volition,  because neither opponent has raised it. The OD states that the claimed invention "may be regarded as involving the use of a human embryo for industrial or commercial purposes" (point 3 of the annex to the summons), and raise this for discussion without coming to an opinion one way or the other. It is surprising this was not picked up by the second opponent, although I can see why the first one would not want to raise it even if they had considered it. The preliminary view of the OD appears to be that the A53(c) exception does not apply, given the narrow scope indicated by G 1/04, but that A53(a) might.