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.
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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.
Surrendering a patent, which is possible under section 29 of the UK Patents Act 1977, is an unusual option to take, although it does happen fairly regularly. In the year to date, according to the UK IPO online patents journal, 20 applications have been made to surrender patents. Over the past eight years (the period the journal has been available in electronic form), section 29 has been used 178 times.
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