Tuesday, 12 July 2016

Partial Priority - An Alternative View

I have written a lot about partial priority over the past few years (to see all of my posts on the subject, click here), and have always allowed conflicting views to be expressed about the subject, for example in various comments on the subject as well as in this post that expresses a view opposed to my own. The discussion to date has, however, been largely about which side should be taken on the issue of whether partial priority should be allowed for a generic claim, i.e. whether a broad or narrow view should be taken, and always within the framework of the EPC and associated case law. This will, of course, determine the outcome of the currently pending G 1/15 case. There are, however, other perspectives that can shed different light on the subject, one of which has been recently published in epi Information.

The article, titled "The History of Partial Priority System of the Paris Convention", by Kazuo Shibata, a Principal Examiner at the Japan Patent Office, goes through the long history of claiming priority for patent applications, going back to the Great Exhibition of 1851 in London. The author then provides details of the various legal developments, and reasoning behind them, that occurred throughout the world up to the establishment of the European Patent Convention in 1973. A key theme of the article, and what appears to be a favourite subject of the author, is what is described as the "umbrella theory" of priority (illustrated by the picture here, taken from the article). This theory, which apparently originated in Germany, was intended to protect an application from being affected by disclosure of the content of its priority document if it covered a combination of features that included subject matter in the priority document. Interestingly, this protects a combination of A+B as well as A OR B from being attacked by disclosure of A in the priority document.

As the author notes, umbrella theory has not been widely taken up, and appears now to be inconsistent with UK and EPO case law. It does, however, provide an interesting different perspective on the question of whether an invention can enjoy partial priority. The author ends with a scenario that he asks the reader to consider, which is similar to some of the scenarios considered in G 1/15. I my view, the scenario makes sense whether the broad view of partial priority is taken or the umbrella theory view is taken, but the author does not yet have an answer himself. I wonder if anyone else can take a view? Is umbrella theory simply outdated and no longer relevant, or does it have a part to play?


  1. The author of the article cites and discusses T 301/87, which kind of adopted the umbrella theory. The author does not mention that this decision was one of the two decisions providing the diverging case law leading to the referral of questions by the President in G 3/93. The Enlarged Board expressly rejected the cited holding of T 301/87 regarding the effect of priority and documents published during the priority interval. Hence, "appears to be inconsistent" is in my opinion rather friendly, the approach was clearly rejected by the Enlarged Board. In my opinion, it is fair that you can not obtain more protection by claiming priority than by directly filing a patent application that proceeds to grant. Moreover, article 4F PC is not at all about the effect on (or of) publications in the interval, but on the (previous) possibility to refuse an application simply because multiple or partial priorities are claimed.

  2. I have received the following comment from the author of the article. Mr Shibata says in response:

    Thank you for your quite reasonable and convincing comments. Actually, the Enlarged Board expressly rejected the cited holding of T 301/87. Of course I know T441/91 and the diverging case law. I wrote this matter at page 285 in my previous AIPPI Japan article. My epi article aims only to show the historical background around the Paris Union. Therefore I did not mention the matter in my epi article.

    With regard to article 4F PC, however, I have a little bit different opinion from yours.

    The initial proposal by the International Bureau at the Lisbon conference reads as follows:

    A patent application cannot be rejected by a convention country on the ground that it claims one or more priorities, or it also contains one or more new elements, provided that there is unity of invention within the meaning the law of the country.

    After the discussion at the Lisbon conference, the endorsed text of article 4F PC reads as follows:

    No country of the Union may refuse a priority or a patent application on the ground that…

    The initial proposal aimed prohibiting to refuse just application, but the endorsed text aims prohibiting to refuse both application and recognition of priority. Regarding the effects on (or of) publication in the interval, of course, article 4F does not stipulate, but Article 4B stipulates them. Regarding the effect of partial priority, article 4B and article 4F complement each other, I think.

  3. Although I recognize G3/93 opinion, to tell the truth I have a little doubt in the reasoning of the EBoA in G3/93.

    The EBoA in G3/93 instructed as follows:

    “The corresponding Article 4, Section A(1), Paris Convention, makes no mention of the subject-matter of the subsequent application. It is generally held that the subsequent filing must concern the same subjectmatter as the first filing on which the right of priority is based [cf. R. Wieczorek, Die Unionspriorität im Patentrecht, Koln, Berlin, Bonn, München 1975, p. 149; G.H.C. Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property as Revised at Stockholm in 1967, Geneva 1968, at Article 4, Section A(1), sub (i)].”

    But, both Wieczorek and Bodenhausen do not intend that the subsequent filing must concern the same subjectmatter as the first filing.

    At footnote 10 of p.156,Wieczorek says “Enthält die Nachanmeldung gegenüber der Erstanmeldung einen erfinderischen Überschuß, so liegt Erfindungsidentität dennoch vor, wenn dieser Überschuß für jeden Fachmann naheliegend war, also keine eigene Erfindungshöhe besitzt”.

    Furthermore, at p.70, Wieczorek says “Klarzustellen bleibt noch, daß Teilprioritäten immer nur innerhalb einer Anmeldung, nicht aber innerhalb einzelner Ansprüche einer Anmeldung vorkommen können, denen als kleinster Einheit der geoffenbarten Erfindungsgedanken immer nur eine einheitliche Priorität zuerkannt werden kann”.

    On the other hand Bodenhausen surely says “The subsequent filing must concern the same subject as the first filing.” However Bodenhausen also says “with regard to patents, special rules concerning the identity of the subject are given in Sections F, G and H of Article 4.”

    We must understand the special rules. In this regard, Actes de la Conférence réunie à Londres (p171) provides the key to solve what the subject-matter of the right of priority is. Namely, Explanatory Memorandum and Proposals concerning new Article 4H reads as follows:

    4. IDENTITY OF APPLICATIONS…This is to give this notion of identity applications an essential flexibility that France had presented to the Hague Conference on the proposal to introduce in Article 4 of the Convention a letter f) new as follows: "The priority may not be refused on the ground that certain elements of the invention for which priority is claimed (La priorité ne peut être refusée par le motif que certains éléments de l'invention pour lesquels on réclame la priorité) do not appear among the claims made in the application to the country of origin, provided that these elements are clearly specified in the description" . (V. Actes de la Conférence de La Haye, p. 337.)

    If the reasoning in G3/93 is not appropriate, only EBoA can overrule the previous G-opinion.

    Actes de la Conférence réunie à Londres
    Actes de la Conférence de La Haye
    Just Patent Law Blog

  4. I appreciate the response of Mr Shibata and will sign with my name as well.
    In view of the context of the historical development, T 301/87 indeed needs to be cited in the EPI article. I had not read the article in the AIPPI Journal. I note that the EPI article mentions that the umbrella theory was "disregarded" in G3/93. We seem to agree that this was in the sense of "rejected". The AIPPI article clarifies this. I think G 3/93 could have been discussedin more detail, but accept that it can also be seen as currently prevailing case law, rather than as part of the historical development that was reviewed in the EPI article.

    I agree that Article 4F PC also covers refusal of priority. What seems to require further analysis is the proposition that Article 4F complements the definition of the effect of the priority right. Without having studied the history of Article 4F in detail, Article 4F seems to just to forbid the (then) practice of some patent offices of refusing priority (or applications) in case of multiple or partial priority claims. But this would require further study from my side. The valuable articles of Mr. Shibata certainly stimulate doing so.

  5. The occasion which I wanted to sum up the “historical development” was that I found the discussion on aim of the right of priority in The IPKat. Someone commented “Where is the self-collision in other countries?”

    So I wanted to show the problem concerning self-collision that J. BOZÉRIAN at the First Paris Diplomatic Conference 1880. In those days, there was domestic novelty standard in the UK, but France and Austria stipulated international novelty standard.

    Another occasion was that I found the explanation “This makes it clear that "element" was not understood as a feature but as an embodiment (Actes de la Conférence de Washington de 1911, Bern 1911, p. 45 f.)” at point 4 in G2/98. Actually at the Washington conference, multiple priorities were first proposed. However, multiple priorities aimed combination of the original patent and additional patents. Many people seem to forget the additional patent system. Under the system, even if the original patent was publicly known, a patent of addition was not questioned regarding the inventive step from the relevant publicly known fact.

    So I wanted to show the proposal by the International Bureau at p.45 at the Washington Conference.

    EPC adopted the internal priority system, and the necessity of the additional patent system was weakened. Many countries repealed the additional patent system. However, if there are affirmed self-collision between priority application and later application, the conversion from the additional patent system to the internal priority system will become meaningless.

    Analyses on the “historical development” are desired to be made in G1/15. I hope so.

    1. I had found an error in the comment. Sorry, I am not good at English.

      “[T]he problem concerning self-collision that J. BOZÉRIAN at the First Paris Diplomatic Conference 1880” should be replaced with “the problem concerning self-collision that J. BOZÉRIAN explained at the First Paris Diplomatic Conference 1880”.

      The explanation by Jules BOZÉRIAN, le Président (the chairman) of the Conference is described at page 40 in Actes de la Conférence internationale pour la protection de la propriété industrielle, réunie à Paris 1880.

      I also wrote wrong html code regarding hyperlink in the comment. Sorry, I am not good at describing source code.

      I am putting these URL directly.

      (The IPKat)
      (Washington Conference)

      (Actes de la Conférence internationale pour la protection de la propriété industrielle)