The Mysterious Affair of Partial Priority and Poisonous Coffee

This post is an edited version of a presentation I gave to the CIPA Yorkshire meeting in Leeds on 14 March 2014. It is reproduced here for the benefit of those who didn't attend and to assist those who did and who want to find out more. It covers a subject that will be familiar to regular readers of this blog, but attempts to put it all together in a fairly coherent whole and, purely for entertainment value, with a silly comparison to a Poirot mystery.

Today I will be talking about partial priority and poisonous coffee. Since I am talking to patent attorneys, I suspect most of you will have a good idea of what this is going to be about. Some of you might already be inwardly groaning about yet another presentation on poisonous divisionals. I promise I won’t go into long boring detail about what the issue is, or why we should or shouldn’t be worried about it. Instead, I will be looking at what underpins the whole poisonous issue, which is partial priority under Article 88 EPC, and I’ll illustrate this with one particular example from last year. Along the way I hope to be able to show how both the High Court and successive Technical Boards of Appeal have got it completely wrong.

Two important landmarks happened last year, both of which were causes for sadness and celebration depending on how you look at it, or which side you were on. The first was David Suchet completing the entire set of Poirot mysteries for television, after playing the character for 24 years. In his final case, Curtain, Poirot returns to the setting of his very first case and, after solving the mystery, dies.

The second landmark was the end of Nestle’s monopoly on Nespresso coffee pods, which for some years has been making enormous amounts of money for Nestle. Unusually for a non-pharmaceutical case, Nestle's patents on what are quite straightforward mechanical inventions turned out to have quite high value. A lot of money has clearly been thrown at trying to use them against alleged infringers, and to defend the patents against attack. Despite their best efforts, they were not able to keep their patent protection nor were they able to win the argument on contributory infringement, and had an important European patent revoked first in the UK, and then finally at the EPO Board of Appeal.

Agatha Christie was keen on using poison as a way of killing off her victims, and used it around 30 times in her books in various ingenuous ways (see here for more). She had studied the subject in detail and was therefore very careful to make sure that the details of how the victim was poisoned were absolutely right in her books. She is once quoted as saying: “Give me a decent bottle of poison and I will construct the perfect crime”.

The very first novel Christie had published was The Mysterious Affair at Styles, first published in 1920. This introduced the Belgian detective Hercules Poirot, who became so popular that he was to feature in another 32 novels and short stories. The case involved the apparent poisoning of the victim, Emily Inglethorp, and the main mystery lay in how the poisoning was done. Once this was clear, it was straightforward to tell whodunnit.

Mrs Inglethorp was found at five in the morning convulsing in her bed, and died shortly afterwards. It turned out she had been poisoned with strychnine, which the police assumed had been in her coffee. The coffee cup was found broken on the floor by her bedside, but it was not just broken, it had been ground into the floor, probably by a shoe. She had taken her coffee to bed at around 8 o'clock the previous evening, after having a light meal. The effects of strychnine though are faster acting than this, and would usually take only about an hour to manifest. She had also taken to bed a bottle of tonic and her night-time cocoa in a flask. Although the tonic contained some strychnine, the concentration was so low that it would not have been enough to kill her. 

The question is then: was it the coffee that was poisoned, or was it something else? The answer to this question was key to how the mystery was solved. As we will see, the answer also turns out to be very similar to what happened in the Nestle coffee pods case, so if you know what happened there you should have a good idea of how the mystery was solved.

Now on to the coffee pods. Nestle have sold many millions of coffee pods. Last year nearly 200 million pods were sold in the UK alone, and Nestle accounted for a large fraction. Unfortunately for Nestle, any patents they had on the coffee pods themselves, which is the valuable item, expired a while ago. The earliest one was applied for in 1976, so is long gone. This US patent, showing the same basic construction of capsule, issued in 1979.

It would not have been much use to keep innovating the coffee pods and get new patent protection because any new designs would need to be backwards compatible with older machines, otherwise customers will get upset and stop buying them. So, what to do? Do Nestle simply accept defeat and allow others to start selling copycat coffee pods and chip away at their market. Of course not. Their main weapon is, of course, marketing, and on a big scale, but they certainly didn't give up on trying to keep some kind of patent protection and use it against their competitors.

The only way to keep some patent protection going was to keep innovating the machines rather than the pods. Here is an example of the latest version of Nestle’s ‘Essenza’ coffee machine. To make a coffee, all you need to do is pop a pod into the top of the machine and, after closing the lever, press the button to make the coffee. To eject the used pod and get the machine ready for the next one, you just lift the lever and the used pod automatically drops into a container underneath.

The way the coffee pods are inserted and removed was the subject of a patent application, EP09007962. In simple terms, what happens is that the capsule is inserted vertically into a space between a moveable part and a fixed part. The moveable part is then pushed forward by turning the lever arm, which presses the capsule against the fixed part and pierces the end of the capsule, ready for hot water to be passed through the capsule under pressure. The coffee then passes through a filter in the capsule, through the fixed part and out of the spout. To eject the capsule the lever is brought up again and the capsule drops down into a container.

A key part of the invention was that the axis of the capsule when first dropped into the machine would be offset from the axis of the moveable part. In the figure on the left, the two axes are shown with the capsule in this intermediate position. After the moveable part has been brought forward, the axes are aligned by the capsule being brought downwards so that it passes a pair of flexible stops on either side. This allows the capsule to drop into the container below once the moveable part is brought back. This is effectively what was claimed in the later application, and what was granted in 2010 as EP2103236B1.

The patent was opposed by six companies, who all wanted to sell competing coffee pods, or machines that used Nestle compatible pods, and each saw the patent as a barrier. Whether Nestle had any grounds for stopping others selling compatible pods using their patent is an issue I don’t have time to go into here. What’s of interest here is one of the arguments the opponents used to try to invalidate the patent. Claims 1 and 5 of the patent as granted (in the official English translation) read as follows:

1. Extraction system comprising a device for extraction of a capsule and a capsule (16) which can be extracted in the device; the capsule (16) comprising a guiding edge in the form of a flange, the device comprising

- a first fixed part (2),

- a second part (3) which is mobile relative to the first part,

- a housing (4) to receive the capsule and defining when in a position of closure of the mobile part against the fixed part an extraction position of the capsule about an axis (25) in said housing,

- a part for introduction and positioning of the capsule comprising guiding means (6,7) arranged such as to insert the capsule by gravity and to position said capsule in an intermediate position; the guiding edge being taken charge of in the guiding means (6,7);

said guiding means being introduction slides allowing the engagement of said flange;

- a system of outflow of beverage (19, 53), said mobile second part (3) being configured to displace the capsule (16) from the intermediate position to the extraction position upon closure of the device,

characterised in that the guiding means (6, 7) comprise stopping means (20) configured to retain the capsule (16) in an intermediate position; the flange pressing against these stopping means in the intermediate position, and in that the second mobile part (3) takes charge of the capsule to displace it from the intermediate position to the extraction position about the axis (25) of the capsule in the extraction position in said housing (4) such that in its movement, the mobile part acts on the capsule to bring it down, the flange of the capsule passing beneath the stopping means (20), and to push it about the axis (25) of the mobile part in its extraction position.

5. Extraction system according to claims 1, 2, or 3, characterised in that the stopping means retain the capsule in a inclined fashion with respect to the axis (25) of the capsule in an extraction position in said housing; the capsule tipping slightly with respect to the axis of the capsule in the extraction position (25).

The key parts of the patent are those underlined: the housing to receive the capsule, and the capsule being inclined, which is worth noting is only in claim 5.

In simple terms, the argument goes like this. The priority document, which was an earlier European patent application that also published (as EP1495702A1), disclosed the same coffee machine as in the patent. What it didn’t contain was a detailed description of the machine that was in the later application. There were two things the opponents argued were not disclosed in the priority application.

The first was the option of the housing to receive the capsule being somewhere other than in the second part. As you can see from the drawing above, the housing is only in the moveable part. The patent did not define in the claim that the housing was in either part, which left open the possibility of the housing being in either or both parts.

The second was the extra option mentioned in the patent, but not the priority application, that the capsule in the intermediate position was held inclined relative to the axis when the capsule was in the extraction position.

Both of these issues raised the possibility of the patent not being entitled to priority. If so, the earlier application became prior art under Article 54(3) and made the patent invalid for lack of novelty.

Nestle managed to get their patent through opposition reasonably unscathed by making some amendments, but the parties appealed the decision. While the appeal was still pending, the patent came before Mr Justice Arnold at the High Court and the same issues about priority came up. Unfortunately, Mr Justice Arnold got it completely wrong on both points (see here for more).

I’ll deal with the second point first, as it’s easier to see how it was decided wrongly. This is the diagram presented at the High Court showing the different ways the pod could be arranged relative to an axis. The pod could be offset from the axis, as in the top figure, or it could be inclined as in the middle drawing. It could also be offset and inclined, as in the bottom drawing. The priority document only disclosed that the pod was offset, but the later application and the patent disclosed that the pod could also be inclined.

Justice Arnold reckoned that, because the priority document did not disclose the inclined option the patent covered more options than were present in the priority document and was therefore not entitled to priority. The problem with this logic is that the inclined option was only present in claim 5 of the patent, not in claim 1 (see previous slide). Whether this is Justice Arnold getting completely confused about priority or being misled by Nestec is not clear, but it probably didn’t help that Nestec argued the point that claim 1 covered the three different orientations shown in the drawings, when in fact it didn’t cover the middle one.

The other point was about whether the patent lost priority because the housing was only described as being in the moveable part in the priority document, but the patent didn’t specify which part the housing needed to be in. This is where Justice Arnold got it wrong again, but the reasons are not quite as clear. He referred to the EPO Enlarged Board decision in G 2/98 to figure out when it would be acceptable for a claim to have multiple priorities.

Just to remind you, this is what Article 88 EPC says about multiple priorities:

Multiple priorities may be claimed in respect of a European patent application, notwithstanding the fact that they originated in different countries. Where appropriate, multiple priorities may be claimed for any one claim. Where multiple priorities are claimed, time limits which run from the date of priority shall run from the earliest date of priority.

This is what the enlarged board in G 2/98 said about how to interpret Article 88:

The use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2), second sentence, EPC is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters. (reasons, point 6.7)

Justice Arnold’s reasoning was that there were three alternatives: the housing could be in the first or second part, or in a third alternative it could be divided between the parts. He concluded that the third option was not a clearly defined alternative to the first two, even though he had just defined it, and the patent was therefore not entitled to priority at all.

Reading the wording of G 2/98, on the face of it you can see how this kind of decision might seem to make sense. However, the enlarged board did not actually intend Article 88 to be so narrowly interpreted. As part of the reasoning in G 2/98, the board refered to a memorandum that led to Article 88 allowing multiple priorities for one claim, and stated that “the memorandum can be said to express the legislative intent underlying Article 88(2), second sentence, EPC”.

The memorandum gave three examples where it should be possible to allow multiple priorities in one claim. The first was where a chemical formula is broadened in a later application, the second where a numerical range was broadened, and the third where a field of use was broadened. In all cases, the memorandum stated that broadening should allow partial priority for the part of the claim that covered the earlier application, while the rest of the scope would be entitled to the later priority date.

The third example in the memorandum was about a priority document disclosing a method of coating the inner walls of pipes, which was then broadened to a method of coating the inner walls of hollow bodies. The later broader scope of claim would be entitled to partial priority for the case of pipes, and to a later priority for the case of hollow bodies other than pipes. So, when G 2/98 stated that multiple priorities were acceptable provided a generic claim gave rise to a limited number of clearly defined alternative subject matters, they must have had this in mind, along with the other examples.

Comparing this example with the one in the Nestec case, it’s quite clear that making the claim scope broader by not specifying which part the housing is in fits quite well. The option of the housing being in the moveable part would be entitled to the earlier priority date, while the other options of the housing being in the fixed part or divided between the parts would be entitled to the later date.

To be fair to Justice Arnold, the same mistake was made in at least three decisions of the EPO boards of appeal, all of which thought they were following the guidance in G 2/98 but none of them referred to the memorandum.

In T 1877/08, the Board rejected a range of numerical values as not corresponding to distinctive alternative embodiments (point 2.4 of the reasons). The same point was made in T 476/09 (point 5.6 of the reasons). This is in direct contradiction to example b) of the memorandum, which specifically refers to numerical ranges being a possibility for multiple priorities in one claim. Both of these decisions must therefore had been wrongly decided on this point.

In T 1127/00, the Board rejected a claim to partial priority for a generic formula encompassing an earlier narrow range in the priority application because, as they said, the claim did not embrace a limited number of clearly defined alternative subject-matters in the form of an “OR” claim which could be split up into groups of different priorities (point 6 of the reasons). This is, however, obviously contradictory in terms of both examples a) and b) of the memorandum.

The only board of appeal decision so far that has actually looked at what G 2/98 actually meant by referring to the memorandum is T 1222/11. In point 11.8 of the reasons, after going through the various examples in the memorandum the board set out in general terms how multiple priorities in a single claim should work. I will paraphrase here, as the board was quite wordy. They said:

In so far as a subject-matter disclosed in a priority document and encompassed by a broader claim of a European application is concerned, the decision on whether priority can be acknowledged for this subject-matter is independent of whether said subject-matter or embodiment disclosed in the priority document is identified in the broader claim as a separate alternative embodiment. Also, when an application on the basis of which a priority date is claimed encompasses a narrower subject-matter already disclosed in an earlier application, the decision on whether the claim to priority on the basis of the later application is valid does not depend on whether the narrower subject-matter disclosed in the earlier application is identified in said later application.

The need to have specific basis for the “limited number of clearly defined alternative subject-matters” in the application is therefore explicitly rejected in T 1222/11. Instead, it is enough for a claim to be theoretically divided up into a first part having a valid earlier priority and a second part having a different priority. For the case of the method of coating hollow bodies, the later application does not need to basis for a claim that states a method of coating hollow bodies other than pipes, because this is already covered by theoretically dividing up the claim into two parts with different priorities.

What should now be obvious, but I haven’t mentioned yet, is how this way of looking at partial priority is the solution to a hypothetical problem that has been discussed for a while. The issue is whether a priority document that is published and becomes Article 54(3) prior art for later filed application can knock out the later application if it claims a broader scope than what is in the priority document. In the Nestec case, the issue was publication of the priority document, which was also a European application. In other cases it might be a divisional application, which could be argued to be Article 54(3) prior art for its parent once it publishes.

Taking the narrow view of partial priority, which Justice Arnold did, means that your own priority document might knock out your patent because it falls within the broader claimed scope of the patent. Taking the broader view, however, it should never be possible for a priority document to be used in this way. This is because the priority document is not prior art for the part of the claim that has a valid claim to priority, while the rest of the scope is at least novel so cannot be knocked out by the priority document alone.

It would be nice if this issue could have been resolved by the board of appeal or the Court of Appeal in the Nestec case. Unfortunately, the EPO board of appeal decided to revoke the patent when they came to hearing the case in October last year and didn’t even get to discuss the issue of partial priority (see here for more). Instead, the board found that the patent failed for added matter, as a result of amendments the proprietor had made during the appeal. The possibility of getting Justice Arnold’s dodgy decision overturned on appeal was then removed, as there was no longer any patent to argue about. 

I can now go back to the question I asked at the beginning: was the coffee poisoned? In the Nestle case, even though the decisions went against them, and the patent was probably invalid anyway for other reasons, I think the answer is that the coffee was not in fact poisoned. It should not have been possible for the priority document to be used against the application. The fact that Justice Arnold and several EPO boards of appeal have found otherwise does not mean that I am wrong, just that the right argument was not presented. If it had been, the conclusion would have been that the coffee was not poisoned and the patent might have survived. In the end though, the patent was killed off by the EPO board of appeal by added matter.

Strangely enough, this is also the answer to the Poirot mystery. If you remember, I mentioned that the victim Mrs Inglethorp was found to have died of strychnine poisoning. Poirot had the coffee analysed and found there was no strychnine in it, which he suspected anyway because if it had been poisoned it would have acted much more quickly. The coffee therefore wasn’t poisoned after all. What was poisoned was her cocoa, and Mrs Inglethorp had done this herself by adding her tonic to it. Although the tonic should have had only small amounts of strychnine, and not enough to kill her, someone else had added bromide to it, which had reacted with the strychnine and made it precipitate out to the bottom of the bottle. The effect was to make the last dose fatal, as it contained most of the poison. The solution to the mystery, as in the Nestec case, was that it was added matter that did it, and not poisoned coffee.

In search of a technical effect

This is a repost of an article that will shortly be appearing in the October 2013 edition of the CIPA Journal. For anyone who doesn't want to know the score before the issue is published, please look away now. Alternatively, read on for a version in which I have incorporated links to the relevant case law and other material. 

Law and practice on what is considered patentable at the UK and European patent offices has been running along parallel lines for as long as the EPC has been in existence. While the direction of travel is always roughly the same, though with occasional diversions, the lines never seem to converge completely. At the risk of a gross oversimplification, this can be largely blamed on the difference between the law of precedent as applied in the UK and at the EPO. On one side, the EPO Boards of Appeal are apparently content to allow "lines of reasoning" to be developed, and sometimes abandoned, as time goes on and technology develops (see for example T 1227/05, commented by me here on the IPKat). Law and practice in the UK on the other hand has followed more of a process of accretion and correction, where previous case law has tended to act as a restraint on any major changes, although changes at the boundary can and do sometimes happen.

There have been six Court of Appeal judgments in the area of patentability under section 1(2) over the period from 1989 to 2013 (see here for a full list). From these, the law in the UK can be considered settled in a way that is roughly based on the four step test put forward by the UK IPO and approved by Jacob LJ in Aerotel/Macrossan from 2006, with various caveats and fudges applied that try to make the test stay in line with earlier Court of Appeal judgments as well as being as consistent as possible with the approach taken at the EPO. To achieve complete consistency between the UK IPO and EPO from the different approaches is, of course, impossible. In an ideal world, the same test would be applied regardless of the office in which an application was being prosecuted, and the same result obtained, not least because the effect of a patent granted by the UK office is the same as one granted by the EPO. This ideal world is not, however, going to appear in the foreseeable future. A change to match the EPO approach in the UK would require abandonment of not just the Aerotel/Macrossan test and related Court of Appeal case law, but also the well-established Windsurfing/Pozzolli test for inventive step. This is because the EPO test for patentability is inextricably linked with the problem-solution approach for assessing inventive step. Barring a highly surprising result from the UK Supreme Court, and ignoring the long-term possibility of the IPO ceasing to grant patents together with UK courts no longer having jurisdiction over UK patents, this is not going to happen. On the other side, it is unlikely in the extreme that the EPO Boards of Appeal would consider abandoning the universally applied problem-solution approach in order to fit with the different approach taken by only one member state. Since a fundamental change in approach is unlikely from either side, the best that could reasonably be hoped for is that outcomes are as closely aligned as possible. As the Enlarged Board of Appeal stated in G3/08 in relation to the exclusion of computer programs, “a uniform understanding of where to draw the line between applications relating to programs for computers as such [...] still cannot be assumed despite considerable convergence in recent court rulings” (point 4.1 of the reasons). However, despite the discrepancies in approach and principles, as Lord Neuberger stated in Symbian, there is clearly a strong desire for the two offices to be “marching together as far as possible”, and “where there may be a difference of approach or of principle, one must try to minimise the consequent differences in terms of the outcome in particular patent cases” (paragraph 61).

Since we can safely assume, at least for the foreseeable future, that the differences in approach and principle are not going to change substantially, the question becomes: how do we ensure that the outcomes are as closely aligned as possible? Now that the heat and antagonism arising from Jacob LJ’s judgment in Aerotel/Macrossan, which claimed that the EPO Boards of Appeal decisions were mutually contradictory, and the resulting response from Herr Steinbrener in T 154/04 accusing the Court of Appeal of missing the point, has dissipated, others have attempted to patch up any differences by using more common language that can be applied to both approaches. A common theme is the unfortunate but seemingly inevitable use of the word “technical”, in particular in the form of tests and checks for whether an invention provides a “technical effect”. Even though no-one has been able to provide a stable definition for what the word “technical” actually means in the context of patentability, this does not seem to matter because decisions from both sides are building up regarding what can and cannot provide a technical effect, while all decisions carefully avoid providing a definition of the exact boundary outside of which there would be no such effect.

In the UK, following the Court of Appeal judgments in Symbian and Aerotel, an attempt was made by Lewison J (as he then was) in Re AT&T Knowledge Ventures LP [2009] EWHC 343 (Pat) to summarise, in the form of a series of useful “signposts”, what aspects of an invention might point towards a relevant technical effect. These signposts are:

i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;

ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;

iii) whether the claimed technical effect results in the computer being made to operate in a new way;

iv) whether there is an increase in the speed or reliability of the computer;

v) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

One benefit of these signposts is that there is no need for the word “technical”; the signposts make just as much sense without it. Hearing officers at the IPO seem to like the signposts, and have used them in practically every decision since AT&T, although in the vast majority of cases to show that a claimed invention does not in fact demonstrate any technical effect. The Court of Appeal, in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 (see here for my comments) has indicated that these are “useful signposts, forming as they do part of the essential reasoning in many of the decisions to which we must look for guidance. But that does not mean to say they will be determinative in every case”, but considered that the fourth was too narrowly put, which should instead ask “whether the computer is a better computer in the sense of running more efficiently and effectively as a computer” (paragraph 51 of Kitchin LJ’s judgment). This has been recently confirmed in Lantana Ltd’s Application [2013] EWHC 2673 (Pat), where Birss J has simply rewritten the signposts as modified by HTC v Apple.

Although the signposts, which are now firmly established in UK practice, are useful pointers towards what might be patentable, they are non-exhaustive and do not necessarily apply in every case. As Lewison J put it in AT&T, “it is still necessary to consider whether the claimed technical effect lies solely in excluded matter” (paragraph 41). This caveat leaves plenty of room for hearing officers and judges to conclude that an invention would still be excluded from patentability. In practice though there have been no decisions from the IPO where one of the signposts has pointed towards a technical effect but where the hearing officer has nevertheless still considered the invention to be excluded. The possibility therefore remains open, but it seems unlikely to be used in practice.

One of the main problems with aligning the UK approach to patentability with that of the EPO’s is that an assessment of patentability is typically made, according to the Aerotel test, without any real consideration of the prior art. The contribution (step two) is often assessed without looking at where the claimed invention differs from the closest prior art, and sometimes even without a search having been carried out. In some cases an assessment of novelty and inventive step is carried out by the examiner, and the issue of patentability is the only issue remaining to be resolved. In most cases, however, there is no real assessment of novelty and inventive step and patentability is the sole issue in question. This approach is completely at odds with that taken at the EPO, where the assessment of patentability is deliberately intertwined with that of inventive step through use of the problem-solution approach. This approach requires the closest prior art to be established, which in some business method cases might be simply a ‘general purpose computer’ (requiring no actual search to be carried out). The difference over this prior art is then established, and what technical effect this difference has. The objective technical problem is derived from the effect, and finally a judgment made as to whether the skilled person would find the difference to be obvious. The assessment of patentability is incorporated in the steps of assessing what the technical effect is. In line with the leading case on the subject, T 641/00, any differences that are not considered to be technical are moved into the problem to be solved, rather than considered as being part of the solution. In this way, any non-technical aspects are considered not to contribute to the technical character of the invention. As stated in T 641/00, “the problem must be a technical problem, it must actually be solved by the solution claimed, all the features in the claim should contribute to the solution, and the problem must be one that the skilled person in the particular technical field might be asked to solve at the priority date” (point 5 of the reasons), and “an invention in the sense of Article 52 EPC can only be made up of those features which contribute to said technical character” (point 6).

A recent decision from the EPO Boards of Appeal, T 1670/07 (commented on by the IPKat here), has reviewed in more detail what would be considered to be technical. As with T 641/00 (which, strangely, was not cited in the decision), the consideration at the EPO is largely a negative one, i.e. there are certain aspects that are considered not to be technical. Based on this decision, which related to patentability of a method of facilitating shopping using a mobile device, selecting multiple vendors for a shopping order and provision of a shopping itinerary based on a user profile are both considered to be not technical. The Board also considered that there were certain ‘fallacies’ in the arguments presented for a technical effect, which in essence claimed that non-technical aspects could in some circumstances contribute to the technical character of an invention. The Board considered that they could not.

How then, in practice, do these different approaches to patentability work, and do they result in decisions where one would favour patentability for particular types of inventions over the other? The answer appears to be in looking at how a technical effect is defined, rather than the overall approach to be followed. Consideration of a technical effect is now at least common to both approaches, even if it is used at different steps in the process. There is also a degree of convergence in what would be considered to be a technical effect, even though the way to assess what such an effect might be is a positive one in the UK (i.e. deciding whether the effect can be found from a list) and a negative one at the EPO (i.e. whether the claimed technical effect is one that has been previously decided not to be technical). In the end though, if there is a technical effect according to the UK approach, there will always be at least an arguable case for the effect to contribute to the technical character of the invention according to the EPO approach. Decisions may vary according to the facts of particular cases, and to how well arguments are made but in general, despite the differences in approach, the good news at the moment is that there should be no significant difference in result. 

Time-Lapse IVF - A non-patentable method of diagnosis?

Article 53(c) EPC states that European patents shall not be granted in respect of "methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body". As far as I am aware, all of the case law relating to this provision relates to methods applied on human or animal bodies in their fully formed state. What does not appear to have been considered previously is whether the provision would apply to methods applied to human or animal embryos. This intriguing possibility has been raised in an article to be published in the journal Reproductive Biomedicine Online, written by Sigrid Sterckx, Julian Cockbain and Guido Pennings. The second of these authors happens to be a European Patent Attorney, while the other two are from the Bioethics Institute in Ghent. The abstract of the article, which is currently available in full online here as a preprint, states:

European Patent No. 2430454 [EP Register here] of Stanford University is open to opposition before the European Patent Office if such opposition is filed by 23 October 2013. This is the European equivalent of the US Patent that raised such controversy in this journal in August 2013 as being a patent on time [the patent is presumably one of these: US7963906, US8323177 and US8337387, although the August 2013 article refers to publication number US 2011/092762. None of these are, of course, patents on time]. The European Patent, which is directed to a method of selecting embryos for implantation using the results of time-lapse microscopy, should, in the present authors’ opinion, be revoked as being directed to a method of medical diagnosis, which is unpatentable under European patent law. The only party currently opposing Stanford’s patent is a competitor, Unisense FertiliTech A/S which is itself seeking to patent similar methods in Europe; the objection that Stanford has patented a method of diagnosis has not been raised by Unisense FertiliTech. We submit that Stanford’s patent should be opposed to safeguard competition and to protect the freedom to operate of clinicians. In this paper we explain how Stanford’s patent should fail under European law.

The argument in the article, which is well worth reading in full, is quite well put and at least plausible, although very probably wrong. The main weakness in the argument seems to me to be whether an embryo can be considered to be a human body. Although there does appear to be support from the CJEU on this interpretation, I think it is possibly a bit of a stretch to apply this to the particular exclusion under Article 53(c). The case law of the EPO Boards of Appeal, in particular the decision in G 1/04 (see this section of the case law book), would also seem to suggest that such a method would not be within the exception because it does not provide a diagnosis for curative purposes. The test would instead only provide an indication of whether an embryo is 'good' or 'bad'. The argument therefore seems to me to be doomed to fail on at least two major points.

The article has, however, already had the desired effect of provoking another opposition. An opposition has recently been filed (here) which, by an amazing coincidence, names the authors of the article and the European Society of Human Reproduction & Embryology as joint opponents. As an aside, I am a bit puzzled as to why the opposition would be filed in this way, rather than using the qualified European attorney as the joint representative.

Regardless of the new opposition, it looks like the patent will probably be revoked, or at least substantially limited, as a result of the opposition that has already been filed, which is very extensive and relies only on conventional grounds of novelty and inventive step. As a point of interest, one of the prior public disclosures cited by Unisense Fertilitec is a YouTube video (see below), which apparently shows the patented method being carried out prior to the filing date. It will, however, be interesting to see how the additional ground for opposition is viewed, and whether it becomes at all relevant or is simply dismissed as being a no-hoper. One to watch for the long term, perhaps, given the long gestation period of EPO oppositions.



UPDATE 5 November 2013: Third party observations have now been filed by Galway Fertility (here) and jointly by the Association of Clinical Embyologists (ACE) & the Royal College of Nursing (RCN) (here), both sets of observations presumably having been prompted by the Sterckx et al article. Both make points based on ethical, rather than legal, grounds, so do not appear to add any further legal weight to the additional opposition. The support by ACE has also been announced on the ACE website here.

UPDATE 20 November 2013: My reply to the paper, which is to be published as a letter in the same journal, is currently in press and available here.

UPDATE 9 May 2014: The patent proprietor's representative has now responded to the oppositions. Their letter of response can be accessed on the EP register here. In brief, they seem to be in agreement with me (unsurprisingly) that the claimed invention is not a method of diagnosis within the meaning of Article 53(c), and for the same reasons. The main points are that i) the method is not a diagnosis of any kind, and ii) it does not result in any kind of treatment. G 1/04 is fairly decisive.

Partial Priority - An opposing view

Regular readers will know that I have been concerned with the issue of partial priority under Article 88 EPC, and how far it can be applied, because this has serious implications regarding the extent to which a European patent or application can be held to lack novelty over its own priority application. I have consistently expressed the view that it should not be possible for a European patent to be held to lack novelty over its own priority application if the effect of Article 88 EPC in combination with Article 54(3) EPC is properly applied. My view, which has support from the EPC and the case law of the Boards of Appeal, is detailed in previous posts (the main one being here). There is, however, an opposing view that can also be said to have support from the EPC and case law, which has been expressed and discussed in comments on this blog and elsewhere. It is not yet clear which view will eventually win out, and I think it will need a referral to the Enlarged Board to settle it.

This opposing view has been detailed by one of the opponents in the Nestec case T 1674/12, which unfortunately will not be the case that settles the issue because a referral to the Enlarged Board has not been made. As noted last week, the Board decided in the end to revoke the patent, and will be issuing their written decision later. Whether their reasons will take into account the partial priority issue is not yet known. I suspect they will simply bypass the issue because the patent was invalid for other reasons anyway [Update 19/10/13: It appears my suspicions were correct; the Board did not even get to the issue of partial priority at the hearing, so it will definitely not feature in the reasons for the decision]. For the time being, it is interesting (to me at least) to see how the other side's view on the partial priority issue has been expressed.  The following is a rough translation of the relevant portion from the opponent's letter from 9 September 2013, which I have annotated with hyperlinks where appropriate. The original is available on the register here. My apologies for any errors or omissions resulting from my less than ideal language skills. If you can come up with a better translation, I would be happy to replace it.

2 . On the issue of partial priority

The patentee seeks, in its letter of 15 July 2013, to criticize the British decision of Nestec v Dualit especially regarding the issue of the invalidity of the priority of claim 1 (and by default novelty vis-à-vis document D1).

2.1. Position of the proprietor

The incumbent continues to assert that claim 1 has a partial priority that immunizes against the lack of novelty vis-à -vis document D1 . In support of this assertion , the owner cited and commented on a recent decision T 1222/11, which also refers to a part of the preparatory work of the EPC 1973, namely a memorandum of FICPI, mentioned in the reasons of the Enlarged Board of Appeal G 2/98.

G 2/98 accepted the principle of allocating separate priority dates for different subject matter covered by the same generic type of claim, provided that it leads to "a claim having a clearly defined limited number of alternatives".

According to the proprietor, the decision T 1222/11 as well as the memorandum of FICPI lends credence to the theory that the above condition posed by the Enlarged Board of Appeal is satisfied if it is possible to "identify conceptually" alternative objects by comparing the claim and the contents of the priority documents.

The approach proposed by the holder should not be followed for the following reasons.

2.2. Neither decision T 1222/11, nor the contents of the memorandum of FICPI, is authoritative

First, the decision T 1222/11 (by Board 3.3.7) is an isolated decision. In point 11.5 of the reasons, it is explicitly stated that the Board departs from the approach that has been followed in previous decisions T 1877/08 (by Board 3.3.10 ), T 476/09 (Board 3.3.9 ), T 1443/05 (Board 3.3.1 ) and T 1127/00 (Board 3.3.8) . We can add to this list the decision T 70/05 (Board 3.3.8) , which confirms the reasoning in T 1127/00.

Thus the decision T 1222/11 is opposed to the dominant jurisprudence of the Boards of Appeal. If only for that reason, it should not be followed by the present Board.

With regard to this Memorandum of FICPI, it is true that the opinion G 2/98 states in 6.4 that we can consider that it "express[es] the legislative intent underlying Article 88(2), second sentence, EPC". The purpose of the memorandum was indeed to suggest that the legislature can allocate multiple priorities in a claim. The proposal was accepted , and it is in this (narrow) sense that the memorandum reflects the ratio legis of Article 88.

Specifically, the Enlarged Board takes up the distinction made in the memorandum between the claims of "AND" type and claims of "OR" type. Only the second type can lead to the allocation of multiple priorities (paragraphs 6.5 to 6.7 of the reasons).

However, the Enlarged Board of Appeal has not expressed the opinion that the detailed content of the memorandum should be taken as is, without changing anything or adding an assessment of whether, for a given generic claim, partial priority can actually be recognized for a portion of the claim.

The Enlarged Board has actually implicitly taken a contrary position when said in the passage quoted in the opinion, at the end of Section 6.7 of the reasons that "The use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2), second sentence, EPC is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters". Indeed, this condition of a "limited number of clearly defined alternative subject matters" is not listed in the Memorandum of FICPI. It is therefore a condition that was added to the memorandum by the Enlarged Board of Appeal , when analyzing the situation of type "OR" claims.

Consequently, it is not correct to take the examples cited in the memorandum of FICPI and indicate that the Enlarged Board approved the allocation of multiple priorities for these examples. The Enlarged Board has only taken over the general framework of the memorandum of FICPI (distinction between claims of type "OR" and "AND"), adding the condition of a "limited number of clearly defined alternative subject matters" regarding claims of "OR" type, without any comment on the illustrations of "OR" type claims presented in the memorandum.

Only the decision T 1222/11 has taken over the sample claims of "OR" type mentioned in the memorandum, but in doing so it follows an approach in contradiction to Boards 3.3.1 , 3.3.8 , 3.3.9 and 3.3.10 .

In addition, on the merits, the approach of the proprietor, which is based on the decision T 1222/11 and the Memorandum of FICPI taken in its entirety, is not consistent with the view G 2/98 as is shown below.

2.3 . The faulty reasoning of the decision T 1222/11 and part of the memorandum FICPI

In section 11.4 of the reasons for the decision T 1222/11, Board 3.3.7 is critical of the jurisprudence of Boards 3.3.1 , 3.3.8 , 3.3.9 and 3.3.10 of the fact that this jurisprudence has held that the requirement for the Enlarged Board on the "limited number of clearly defined alternative subject matters" characterizes the manner in which the subject of an "OR" claim must be defined. In point 11.5.2 of the reasons, Board 3.3.7 offers its own interpretation of the condition laid down by the Enlarged Board, that this condition simply refers to the ability to identify conceptually, by a comparison of the claimed subject matter with priority documents, a limited number of clearly defined alternative subject. This theory is also extended to the case of partial priority (paragraph 11.6 of the reasons).

But this interpretation cannot be correct because it leads to rendering meaningless the condition "limited number of clearly defined alternative subject matters" posed by the Enlarged Board. Indeed, it is always possible to divide conceptually (that is to say abstractly and thus artificially) a generic object into two objects of type A and non-A. Also, one wonders in what situations allocating multiple priorities (or partial priority) should not be accepted, following this approach. In other words, to follow the proposed T 1222/11 interpretation, the condition imposed by the Enlarged Board had simply no reason to be: it is not a requirement.

In addition, the Board 3.3.7 reviews examples in the memorandum of FICPI, and sees a confirmation of its theory (Section 11.5.8 of the reasons). But in fact, at least some of these examples are problematic.

The first example cited (listed in Section 11.5.5 of the reasons) seems consistent with G 2/98. In this example, a first priority document discloses subject matter with the element chlorine, a second priority document discloses subject matter with the elements bromine, iodine and fluorine, and a generic claim in the subsequent request is subject matter with a halogen. In this case, the generic claim has the first priority in terms of chlorine, and the second priority that is bromine, iodine and fluorine.

This first example appears to conform to the G 2/98, since the generic term "halogen" corresponds to a limited number of clearly defined alternative subject , namely the four elements chlorine, bromine, iodine and fluorine.

The situation is different when a generic claim covers a continuum of embodiments . This is particularly the case in the third example of the memorandum of FICPI in point 11.5.7 of the reasons of T 1222/11.

In this example, a first priority document discloses a method of coating the interior of a pipe, and a second priority document discloses a method of coating the walls of bottles or any other hollow body. The memorandum suggests that the provision of the EPC proposed on multiple priorities will permit a generic claim in a subsequent application of a method of coating the inner walls of a hollow body. The memorandum justifies this approach by the desire to avoid having to unnecessarily increase the number of claims of patent applications.

The memorandum states in this regard: "if multiple priorities are not allowed for a single claim, the applicant must write parallel claims, one on the method of coating inner walls of the pipe, which will benefit from the first priority, and the other on the method of coating inner walls of hollow body other than the pipes, which will benefit from the second priority".

But this position is completely incompatible with the position of G 2/98, that for the condition of the "same invention" to be met for a claim to be eligible for the priority of an earlier application means that: "the person skilled in the art [must ], using common general knowledge, directly and unambiguously deduce the purpose of the claim of the previous application as a whole".

According to the reasoning of the memorandum of FICPI, a putative claim "on the method of coating inner walls of bodies other than hollow pipes" is supposed to benefit from priority in the second priority document. The second document priority only describes a "method of coating walls of bottles or any other hollow body" and therefore does not describe a method of "coating internal walls of hollow bodies other than pipes". According to G 2/98 - and the application has been made consistently by the Boards of Appeal - this claim devised by the FICPI memorandum therefore cannot benefit from the second priority. It is necessary that the second priority document itself describes a "method of coating inner walls of bodies other than hollow pipes" for priority to be validly claimed.

Correspondingly, the generic claim proposed in the third example of the memorandum of FICPI cannot benefit from the multiple allocation of the first priority and the second priority. Not that the claim was a generic form - since this does not raise any difficulty in the case of first example of halogens, but the fact that the concept of cladding inner walls of hollow bodies covers a multitude of possibilities (while G 2/98 requires a limited number of subject matters), which are not clearly defined (although the G 2/98 requires that the objects are clearly defined). Thus, this claim cannot really benefit from the second priority, which is the only one to disclose the generic concept of cladding hollow bodies, a concept that is not divisible by a limited alternative objects clearly defined number.

In fact, the Board 3.3.7 seems to have identified the contradiction between the third example of the memorandum of FICPI and the position of G 2/98. But for the Board, the position of G 2/98 does not apply just to the situation of multiple or partial priorities .

It is true that the question that the Enlarged Board of Appeal responded to did not specifically concern the situation of multiple or partial priorities . Nevertheless, the principle laid down by the Enlarged Board has a very broad application and also covers claims of type "OR" with multiple or partial priorities. Thus, the allocation of a certain effective date of only part of the subject matter of a claim assumes that the subject matter can be directly and unambiguously derived by the skilled person from the relevant reference document .

To decide otherwise would be to establish an exception to the test for disclosure that was developed by the Enlarged Board of Appeal over the years including G 3/89, G 11/91, G 2/98, G 1/03 and G 2/10 - while nothing justifies such an exception.

This approach, termed the "gold standard" in G 2/10, is indeed precisely considering the coherent separate questions of the validity of the right of priority (Art. 87 EPC ), the extension of subject matter (Art. 123(2) and 76(1) EPC) and novelty (Art. 54 EPC).

And, in this consistent approach, the central criterion is direct and unambiguous disclosure for the skilled person. This is why the reference to the possibility of identifying conceptually alternative subject matters proposed by T 1222/11 and endorsed by the patentee has no place in this coherent approach. It is, in effect trying to implement a so-called rule of logic to conclude in a systematic way the possibility of benefiting from the allocation of multiple or partial priorities.

However, using a rule of this type of logic has been firmly rejected by the Board of Appeal, in a related context, that of the evaluation of disclaimers. The Enlarged Board [in G 2/10] concluded that it was not possible to make a case by case evaluation of the direct and unambiguous disclosure of relevant subject matters.

The memorandum of FICPI was written in 1973 , well before the establishment of the "gold standard" mentioned above. It is not surprising that it is not fully compliant with this standard. It is for this reason that the Enlarged Board of Appeal made clear in the G 2/98, the condition of a "limited number of clearly defined alternative subject matters", the only way to ensure consistency of the whole practice of the EPO .

2.4. Conclusion concerning claim 1

In view of the foregoing, the reasoning of the patent holder cannot be followed. Claim 1 of the main request does not cover a "limited number of clearly defined alternative subject matters". In fact the claim covers an infinity of subject matters that are not identifiable to each other - as has already been explained above. This claim cannot therefore benefit from the claimed priority, even partially. So there is a lack of novelty vis-à -vis D1.

This opposing view looks at least superficially persuasive, citing much relevant case law in support. The main flaw in the argument, however, is the assertion that the Enlarged Board in G 2/98 did not consider that all of the examples in the FICPI memorandum could justify a claim having a valid claim to partial priority under Article 88 EPC. If this was the case, it is very strange that the Board made no mention of this in their reasons. The Board clearly approved the memorandum and its justification for Article 88 EPC, so the argument that the criterion of "a limited number of clearly defined alternative subject matters" somehow makes some of the examples in the memorandum invalid is to my mind implausible. If instead we take all of the examples in the memorandum, which the Board in G 3/98 certainly at least considered, to be valid then the opponent's argument must fall away and a claim to partial priority of the kind in the Nestec case must be valid.

Nespresso European Patent Revoked

Following my previous post on the subject of the appeal case in T 1672/12, the hearing for which was held in Munich over the past couple of days, a press release from Nestec has announced that the Board of Appeal has decided to revoke the patent (thanks to IPCopy for prompting me with a link). Nestec's press release states:

Nestlé Nespresso SA acknowledges the decision today of the Appeals Board of the European Patent Office (EPO) to revoke a patent related to the Nespresso system. The decision overrules a decision by the EPO [opposition division] from April 2012, which maintained the patent in an amended form. We believe that the decision fails to recognise the unique innovations inherent in the design of the Nespresso system. 

While disappointing, the ruling does not have any impact on the current competitive situation. Nespresso has brought legal cases against producers of generic capsules, although there are currently no prohibitions on their sale based on this patent. The decision, therefore, does not change the status quo. 

The protection of our intellectual property is an important component of our business strategy. However, our success will continue to be driven by our ability to exceed consumer expectations by delivering products and services of exceptional quality. This focus has allowed us to maintain our position as the reference in the portioned coffee category and it is why consumers continue to choose the unique Nespresso experience over the 100 other portioned coffee offerings in the market globally. 

We will await the written decision of the EPO ruling before determining next steps in the pending legal cases.

This presumably means that the Board has decided not to refer the partial priority issue to the Enlarged Board, which is doubly disappointing. The reasons behind the Board's decision will not be known until the written decision issues, which could take a few months. It will certainly be interesting to see how the Board managed to tackle (or perhaps avoid?) the issue.

UPDATE 19 October 2013: I have heard from a very reliable source that the issue of partial priority did not come into play at the hearing. The deciding factor was instead that of added matter (Article 123(2) EPC). The Board got no further than this, deciding to refuse all requests on this basis and revoke the patent.

UPDATE 22 November 2013: The minutes of the oral proceedings have now appeared on the EP register here. The minutes confirm that the patent was revoked for not complying with Article 123(2). The Board stated:

"Après délibéré, la chambre a conclu que l'objet de la revendication 1 selon la requête principale ne satisfait pas aux exigences de l'article 123(2) CBE, en particulier du fait de la suppression de deux caractéristiques ("position intermédiaire selon un axe de manière décalée et/ou inclinée" et- "la capsule asymétrique"), et du rajout des deux caractéristiques finales prises en isolation dans la description (collerette passe "en dessous des moyen d'arrêt" et "de façon à ce que dans son mouvement, la partie mobile agisse sur la capsule pour la descendre")"

UPDATE 6 January 2014: The decision has now issued, and has been expertly summarised here at K's Law. Not a word about toxic priority, of course.

Coffee pods at the ready

The hearing in appeal case T 1674/12 relating to Nestec's European patent EP2103236 is due to be held tomorrow, 9 October 2013, at the EPO in Munich. For readers unfamiliar with the case, see my earlier post here. Since I last posted on the subject there has been further correspondence, the most interesting bit of which to my eyes is a letter filed just a few days ago by one of the opponents. This letter raises a question that the opponent submits "depending on whether certain issues arise during the oral hearing". The opponent asks:

1) How is the proviso in G 2/98 [point 6.7] that "The use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2), second sentence, EPC is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" to be applied?
2) What is the test in law for a "limited number of clearly defined subject matters"?

The question, similar to that raised in my last post, goes to the heart of the partial priority issue on which a significant part of the appeal depends, and on which there is now a clear discrepancy in the case law of the EPO Boards of Appeal. Although it would obviously delay resolving the issue for quite a while, a referral to the Enlarged Board would seem to me to be a necessary next step so that this issue can be properly addressed.

Given that the Board of Appeal will issue a decision at the hearing, but which will not appear in writing for a while, any information on how the case goes would be gratefully received, either as comments to this post (anonymous if necessary) or by email to me at tuftythecat@gmail.com.

UPDATE 11 October: According to a press releases here, picked up by the WSJ here, the Board of Appeal has revoked the patent. This presumably means that the Board did not consider it worth referring a question to the Enlarged Board on the partial priority issue. This could perhaps be because the patent was invalid for other reasons, but we will not know for sure until the Board issue their written decision.

2.5 Million UK Patents? I don't think so.

The UK IPO recently announced in their IPO Facto blog (archive version here) the "2.5 Millionth Patent!", on the occasion of publication of GB2500000. The IPO have also added it to their history section here, and the story has been picked up here, here, here, here, here and here. The immediate impression that any reader might get from this is that 2.5 million patents have now been granted since the Patent Office started. Great, you might think, and a vindication of the inventiveness of UK inventors punching far above their weight. After all, the much bigger USA only passed the 8 million mark a couple of years ago.

This impression would, unfortunately, be completely false. The Patent Office has not granted 2.5 million patents. It has, however, published 2.5 million patent applications (for the time being let's ignore what happened prior to the 1977 Act*). This is a very different thing. Under UK patent law, every patent application in the UK has to first be published before it is granted, unlike in the US where a patent number is only given once a patent issues. UK applications are, once a search has been done, first given a publication number ending in 'A', which is currently what GB2500000A is, and normally published 18 months after the earliest priority date. Only once the application has been through examination can it be granted. The same number is then used for publication of the granted patent, but with a 'B' at the end instead.

Given that not all patent applications proceed to grant, there will certainly be a lot fewer than 2.5 million patents granted by the UK Patent Office. I don't have the figures easily to hand (does anyone know?), but I would hazard a guess that the number will probably be somewhere around half to two thirds of that. There might have been two million patents granted, but I doubt it has got quite that far yet.

Currently, patent applications cannot be granted until at least 3 months from the date of publication. Therefore, even if GB2500000 is viewed by the examiner as being allowable (and it isn't at the moment), it cannot be granted until after 11 December 2013.

I should say, in case anyone is thinking I am being overly negative, that I think the invention defined in GB2500000 seems pretty neat. The application describes a monitoring method using microwaves, where electrically conductive fibres embedded in fabric are used to generate signals by reflection of microwave radiation. This could, the application says, be used for remote monitoring of personnel in hazardous environments, for patient monitoring or for monitoring athletes during training or performance. Very clever (if it actually works, of course). The search results look pretty promising too, with only citations of background relevance. If the applicant, Liverpool John Moores University, can overcome the various clarity objections raised by the examiner, it looks like they would be able to get themselves a granted patent. This will, however, not happen until after 11 December 2013, and it certainly won't be the 2.5 millionth UK patent.

*UPDATE 4/10/13: There is an interesting quirk here, for those interested in what happened before the 1977 Act came in. Since numbering restarted at GB2000001 under the 1977 Act (as mentioned in the IPO's history section), there are quite a lot of numbers that were not used, leaving a hole of nearly 400,000 that has not been filled. The total number of GB applications published is therefore at most about 2,100,000.