Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect.As readers may recall, this is a response to the first question referred to the Enlarged Board, which was:
Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic "OR"-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document?In other words, the answer to question 1 is a clear "no". All the other questions were dependent on question 1 being answered in the affirmative, so they now all fall away and need not be answered.
No reasoning has yet been provided behind the order, but this will apparently be issued "as soon as possible", according to the accompanying letter to the EPO president. For now, we can at least be satisfied that the problem of poisonous priority and poisonous divisionals has finally been laid to rest and the flawed case law from the technical boards, as well as in some court decisions (such as this one, which I wrote about here), can be set aside.
Just for the record, I would like to say that I was right all along.
This judgement may solve the problem of partial priorities, but I am not so sure whether it solves the problem of the poisonous divisionals.
ReplyDeleteThere are cases where the priority is clearly not valid, e.g. where the claims were restricted by a feature whuch is not in the priority application. These cases don't seem to have been addressed.
For the question of the poisonous divisionals it would still have to be decided whether parent and divisional may be cited one against the other under Art. 54(3) EPC
Try reading question 1 again. It only applies to cases where there is claim broadening.
DeleteI fully agree.
DeleteThe problem is that poisonous divisionals are a real problem.
Unfortunately, some people, in particular some people in the Boards of Appeal, are of the opinion that the solution lies in partial priorities. This is why the questions were put as they were, without forcing the Enlarged Board to take position on the more fundamental question of whether parent and divisional applications are prio art one for the other.
Maybe the decision text says something about this issue.
If not we will have to wait for a future decision to put an end to this spook.
I don't understand. Perhaps it would help if you illustrated the issue with an example?
DeleteImagine a claim for a manufacturing process. Imagine that the priority application discloses the process together with some example embodiments. In the second filing the claim is restricted by a feature not directly and unambiguously derivable from the priority application, e.g. a temperature range (e. g. "at a temperature of 20-50°C"). Such a restricted generic claim clearly does not enjoy priority while some of the example embodiments of the priority application, reproduced in the second filing and the subsequent divisional will be inside it.
DeleteIt does not appear that priority of such a claim can be rescued by means of partial priorities.
This is just an example but I have seen quite some cases where the priority was lost due to the introduction of a limiting technical feature into the claim which was not disclosed in the priority document.
The generic claim restricted to the temperature range doesn't enjoy full priority. But according to the G1/15 Order, partial priority for the embodiments disclosed in the priority application (in an enabling manner) may not be refused. No other substantive conditions or limitations apply. Your second or divisional application is not poisoned by these embodiments.
DeleteThe additional feature in the claim of the later application makes the claim lose priority because the feature was not disclosed in the earlier priority document. The additional feature also makes the claim novel over the priority disclosure. Poisonous priority cannot therefore apply, but nor can partial priority. The claim is not a "generic OR" type claim, as laid out in G 2/98, but an AND type claim, for which partial priority does not apply. Priority is always lost by the addition of a limiting feature that was not in the priority document, and this is not controversial.
DeleteDear Tufty, yes, there we are, almost.
DeleteI agree with your analysis regarding the priority of a claim including a limiting feature not disclosed in the priority application.
However, the second part of your analysis is the problematic issue. The additional feature does not make the claim novel, because at least some of the example embodiments have been carried out at the claimed temperature.
This situation can only be remedied if partial priority is also acknowledged in case of generic AND-limitations, which was not part of the referral. Or, if the Board expresses some opinion about the citeability of parent and divisionals as prior art for each other.
It appears to me that the partial priority issue will raise many new questions since it is not limited to situations involving parent and divisionals, without however solving the issue of toxic divisionals.
The referring board should rather have asked to decide on parent and divisionals directly without hiding behind this partial priority issue.
The later claim can be considered as a generic OR type claim if you consider the embodiment in the priority document that discloses the temperature range (let's say there is only one for the sake of argument). The later claim is then a broadened version of this embodiment, and can be conceptually divided into the narrow embodiment and the rest of the scope. If none of the other embodiments disclose the temperature range, they can be ignored because they cannot be relevant for novelty of the later claim. G 1/15 then applies, and the earlier priority document is not poisonous.
DeleteWhy not just follow the Enlarged Board's order in G1/15?
DeleteThe embodiment with a specific temperature disclosed in the priority document gives rise to a partial priority. As long as it was properly disclosed, entitlement to that partial priority may not be refused. No other substantive conditions or limitations apply in this respect.
In particular, the partial priority does not depend on conditions or limitations such as mental gymnastics over whether and how you can notionally split the claim. The partial priority stems merely from the disclosure in the priority document and may not be refused.
This means that the embodiment with the specific temperature cannot destroy the novelty of the later claim. Priorities are not poisonous. Divisionals are not toxic. End of.
Tim: I fully agree.
Delete"Tufty's Law" has evolved a little over time. The original idea (in your 2013 link and in T1222/11) was that the claim could conceptually be divided into two parts. E.g. if the claim said "metal" but the priority document only disclosed "copper", then you would divide it into "copper" and "metal but not copper".
ReplyDeleteTo me, that is an attempt to find that the claim covers a "limited number of clearly-defined alternatives" in accordance with the proviso to G2/98, Reasons 6.7.
The better view, in my opinion, is that it is simply not necessary for the claim to fulfil the requirement for a limited number of clearly-defined alternatives. The Enlarged Board could just overrule the proviso in point 6.7. Partial priority should be based simply on what the priority document discloses, without any conditions on the subsequent claim. Though of course, the partial priority only protects you to the extent of the subject matter it actually discloses - hence "partial".
Alternatively, there is also the argument which the patentee's representative made at the oral proceedings. He suggested that G2/98 simply had no need to consider generic-OR claims. So in his view, the Enlarged Board could hold that the proviso in point 6.7 doesn't apply to them, but does apply in other circumstances. This decision and the point 6.7 proviso would then sit happily side-by-side.
Which of these is right? We need to wait for the written decision to find out the Enlarged Board's reasoning.
I think the idea of conceptually dividing the claim into a priority claiming part and the rest is an inevitable consequence of a 'no' answer to question 1, but there may be more to be said about point 6.7 of G 2/98.
DeleteThe problem with "protects you to the extent of the subject matter it actually discloses" is that priority does not work that way.
DeleteIf a claim has priority, that means you can only cite documents against it published before the corresponding priority date (independent of what those documents disclose).
So multiple priorities for a claim means that the subject-matter of the claim is split up in / viewed as an "OR" of (possibly overlapping) "alternative" subject-matters, each subject-matter being assigned a different effective date.
Each of these subject-matters has a different effective date for determining the state of the art, so novelty and inventive step will have to be examined separately for each alternative subject-matter.
If one of the alternative subject-matters is not new or is not inventive, then the claim is not new or not inventive.
You are of course correct. I don't see what the problem is though. The specific issue addressed in G 1/15 about partial priorities relates to whether a priority document can become A54(3) prior art, not about how to deal with intervening disclosures. If there is an intervening disclosure then it has to be assessed whether the later part of the claim is new over this, and amendments come into play.
Deletei bet there will be in the future some discussion on what is a generic OR claim...i would be surprised if any broadening is covered by such term
ReplyDeletethe T0557/13 seems to look in reasons 4 for a kind of range broadening of every feature claimed in the subsequent application and the term "OR claim" is hopefully reserved for this type of broadening
what if one feature of the priority (for example disclosing features A+B combined) is simply not there in the subsequent application (for example claiming A only)? is it still an OR claim "encompassing alternative subject matter" i.e. Feature A with B or without B
Would the claim to Feature A only still have a blanket protection against any intervening disclosure of A+B based on partial priority to A+B??
See the Paris Convention, Article 4B:
Delete"Consequently, any subsequent filing in any of the other countries of the Union before the expiration of the periods referred to above shall not be invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention...."
Here, "the invention" means the subject of the priority application, A+B combined. So the subsequent application which claims the priority shouldn't be invalidated by an intervening disclosure of A+B.
The subsequent application might be invalidated by an intervening disclosure of A alone, without B. That would depend on the disclosure of the priority application. Is A alone, without B, directly and unambiguously derivable from it? Or does it only disclose A+B together?
Would the claim to Feature A only still have a blanket protection against any intervening disclosure of A+B based on partial priority to A+B??
DeleteThat seems to be the inevitable implication of G 1/15.
You can still cite the intervening disclosure of A+B against the "remaining subject-matter" A minus A+B. It might be obvious to leave out B or change it to B' or so. That would show obviousness of A minus A+B and thus obviousness of A.
but that would be in blatant contradiction with G3/93...
Deletei think this kind of claim (A with or without B) is simply not an OR claim which - until G1/15 confirms the definition of the referral - should encompass alternative subject matters having ALL the features in the claim
Congratulations!
ReplyDeleteNext, I am interested in the effect of partial priority in the context of Article 54(2) EPC.
In T0665/00, the EPO’s Technical Board instructs as follows:
Il a été établi que le document de priorité décrivait des poudres non compactées contenant des microsphères creuses "Expancel DE" dont la masse spécifique tombe sous le terme générique "inférieure à 0,1 g/cm3 de la revendication 10 du brevet litigieux (point 3.2). Par conséquent, parmi les différentes alternatives que regroupe la revendication 10 du brevet en litige, les poudres non compactées contenant les microsphères "Expancel DE" bénéficient de la date de priorité revendiquée.
L'usage antérieur invoqué se situant après la date de priorité et mettant en jeu le produit "Poudre Majeur", qui selon la requérante contient les mêmes microsphères "Expancel DE", ne peut donc détruire la nouveauté des poudres non compactées contenant les microsphères "Expancel DE" selon la revendication 10 du brevet litigieux, puisque ces dernières jouissent de la date de priorité.
https://www.epo.org/law-practice/case-law-appeals/recent/t000665fu1.html
I know it is just slight possibility, and your view is that partial priority only protects against novelty-only prior art under Article 54(3) EPC.
A ray of hope.
This answer finally puts to rest the examples from the Memorandum.
ReplyDeleteExample c)
P1: coating the inner wall of a pipe
P2: coating the inner wall of bottles or any other hollow bodies
Claim: coating the inner wall of hollow bodies
Memorandum says: now the alternative "coating the inner wall of pipes" enjoys priority from P1 and the alternative "coating the inner wall of hollow bodies not being pipes" enjoys priority from P2.
G 1/15 confirms that "coating the inner wall of pipes" enjoys priority from P1.
But G 1/15 makes clear that "coating the inner wall of hollow bodies not being pipes" can only enjoy ("partial") priority from P2 if P2 discloses "coating the inner wall of hollow bodies not being pipes". Since P2 does not disclose this subject-matter (gold standard etc.), the second alternative does not enjoy priority from P2.
Of course the claim as a whole does enjoy priority from P2. But the claim as a whole is vulnerable against 54(3)-prior art disclosing "coating the inner wall of pipes", whereas "coating the inner wall of hollow bodies not being pipes" is new over such prior art.
Interestingly, T 1222/11 started from the validity of example c) and the principle that the EPC is coherent to derive the partial priority antidote to poisonous divisionals. But now the validity of example c) is no longer tenable, while the antidote stands (*). So much for coherence.
(*) that the antidote stands is only clear if one takes into account point 8.2.1 of the referral decision:
For the purposes of the present decision, the expression "partial priority" is used by the Board in a narrow sense (cf. Schricker (D29), point II.1, second paragraph; Memorandum, paragraph 38), to refer to the situation in which part of the subject-matter of a claim is entitled to the priority date of a single earlier application, whereas the remaining subject-matter is entitled only to the filing date of the subsequent European patent application.
The whole trick lies in the part in bold. Even though the "remaining subject-matter" is disclosed nowhere (gold standard etc.), not in any priority application and not in the application as filed, it still gets assigned a date and, apparently, it may be examined for novelty and inventive step on its own.
I think you are jumping too quickly to a conclusion about what the reasons for G1/15 will say. We haven't seen them yet. But subject to that, here's my view.
DeleteWe agree that the claim as a whole enjoys priority from P2. And "coating the inner wall of pipes" enjoys priority from P1. In my view, that is all that is needed.
I agree that there's no priority for the notional alternative "coating the inner wall of hollow bodies not being pipes", unless there's an explicit disclosure of that in P2. But in my view it is unnecessary to consider such an alternative. [*]
You argue that the claim as a whole is vulnerable to a 54(3) disclosure of "coating the inner wall of pipes", prior to P2. I disagree.
Under the Paris Convention, Article 4A(1), priority is a right which stems from the act of filing the priority application P1. Under Article 4B, the consequence of filing P1 is to protect the subsequent claim against acts accomplished in the priority interval. Particularly novelty attacks based on "the invention", i.e. the same invention (same subject matter) as disclosed in P1. And under Article 4F, you still get a partial priority for the subject matter of P1, even if your subsequent claim contains additional elements. But of course, only to the extent of what P1 discloses.
So the claim as a whole is protected from disclosures (54(3) or otherwise) of what's in the priority application P1. That is the purpose of the priority under Paris 4B - to protect the subsequent application from disclosures of the subject matter of P1. Nothing more is needed.
=======================
[*] I acknowledge that the Memorandum does consider the alternative "coating the inner wall of hollow bodies not being pipes". But look at the context. It was arguing that if you couldn't have multiple priorities for one and the same claim, then you would have to draw up two parallel claims for the two alternatives. It doesn't spell it out explicitly, but in that case clearly you would also need to provide support for "coating the inner wall of hollow bodies not being pipes".
Thankfully, the Munich Diplomatic Conference adopted the Memorandum's proposals, so none of that is necessary.
@Tim:
ReplyDeleteI think you are misreading Art. 4B of the Paris Convention.
What you are saying, if I understand you correctly, is that claiming priority (for the same subject-matter or not) from a first application disclosing A+B protects you from any disclosure of A+B during the priority year. But that is not correct.
Art. 4B means that if you validly claim priority from a first application disclosing A+B, then you are protected against any act accomplished during the priority year. But A+B in the first application only leads to a valid priority for a claim to the "same invention", so for a claim to A+B.
Suppose the first application discloses A+B and one year later priority is claimed in an application claiming A+B+C. During the priority year, a document disclosing A+B was published. Suppose feature C is a trivial modification.
If I am not mistaken, then according to you the claim to A+B+C would be protected against the publication of A+B in the sense that A+B cannot be cited against A+B+C for novelty or inventive step.
But this is how it works: A+B+C is not the "same" invention as A+B, so does not enjoy any priority right. Therefore the publication of A+B before the filing date of A+B+C can be cited against A+B+C. Since C is a trivial modification, the claim to A+B+C will fall.
See G 3/93, which deals with exactly his situation.
The EPC implements Art. 4B Paris Convention in Art. 89: a validly claimed priority moves back in time the effective date for determining the state of the art. That's all that a valid priority rights gets you.
"If I am not mistaken, then according to you the claim to A+B+C would be protected against the publication of A+B in the sense that A+B cannot be cited against A+B+C for novelty or inventive step.
Delete"
Protection against inventive step as well as novelty would be nice, and this was indeed the position under section 52 of the 1949 Act.
At the time of the 1977 Act, I attended a seminar given by a highly respected former President of CIPA, who said that he had persuaded the parliamentary draftsman that section 6 of the 1977 Act was necessary, in order to replicate the effect of section 52 (1949).
But as you say, G3/93 decided otherwise. Likewise an English court (Robin Jacob?) decided otherwise for section 6.
So partial priority only helps you for novelty. If you have a partial priority for copper, and if an intervening 54(2) publication of copper makes it obvious to use aluminium, then a claim for metal is invalid. But of course that's not an issue for a 54(3) situation such as an allegedly poisonous divisional.
To Mr. Tim Jackson
DeleteSince I am a Japanese, I have no sense of the EBoA. So please teach me!
Is there not at all any possibility that the EBoA will overwrite the opinion in G3/93/?
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”.
Next, 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.
(Reference)
Actes de la Conférence réunie à Londres
ftp://ftp.wipo.int/pub/library/ebooks/wipopublications/London_1934.pdf
Actes de la Conférence de La Haye
ftp://ftp.wipo.int/pub/library/ebooks/wipopublications/Hague_1925.pdf
To kaz-xmas:
DeleteAccording to G 2/98, "same invention" or identity of invention is a very narrow concept. Basically the subject-matter of a claim is the collection of all embodiments that fall within the scope of the claim. The claim will have a regular priority if the priority document discloses that exact same collection.
There is a strong connection with the allowability of amendments under the EPC. An amended claim is only allowable if it defines a collection of embodiments that was already identically disclosed in the application as filed (description, claims, drawings). G 2/98 basically says that the test for priority is the same as the test for added subject-matter (allowability of amendments).
So your citations from Wieczorek seem incompatible with how things are understood under the EPC.
Regarding Art. 4F/4H of the Paris Convention, according to G 2/98 the term "elements" is to be understood as "embodiments". So the fact that the subsequent application discloses embodiments not present in the priority application only means that those added embodiments have no priority right. The subject-matter in the subsequent application that is present in the priority application does enjoy priority (it not being important whether that subject-matter is present in the claims or in the description or drawings).
So, if P1 disclose A+B and the application claims A+B+C, then the new "element" is not feature C, but the combination A+B+C. A+B+C will get the filing date and will not be protected against any publication between the (for that claim invalid) priority date and the filing date.
I don't expect G 1/15 will explicitly overrule anything. But it does seem to create complicated questions.
Dear kaz-xmas, adding to Anonymous at 16:21 on 3 December:
DeleteParis Article 4A(1) just says that if you file a first application, this gives rise to a priority right. But it doesn't say explicitly what subject matter this priority right covers.
Nevertheless, it is generally held that it covers the same subject matter as described in the first application. G3/93 cites certain passages from Wieczorek and Bodenhausen to support this.
I don't think that means the Enlarged Board in G3/93 endorsed the other passages from Wieczorek which you quote.
Those other passages seem to reflect the old view in German law prior to the EPC. During the negotiations for the EPC at the Munich Diplomatic Conference, it was necessary to reconcile differing views about priority from different countries.
You may find it interesting to read the FICPI Memorandum C, together with the corresponding paragraphs 308-317 of the Minutes of the Munich Diplomatic Conference.
http://www.timjackson.plus.com/FICPI_Memo_C.pdf
The FICPI Memorandum argued that multiple priorities could be claimed for any one claim, contrary to the view at p.70 of Wieczorek. Initially the German delegation opposed this (paragraph 313) but eventually withdrew its reservations (paragraph 317).
By the way, when we talk about A+B+C, this is a so-called AND-claim. That's what G3/93 was considering. The Memorandum argues that different considerations apply for AND-claims and the generic OR-claims with which G1/15 is concerned. I should probably have made that clearer in my response above, though it remains true that in a generic-OR situation partial priorities help for novelty but may not help for inventive step.
To Mr. “Anonymous”
DeleteThank you very much. Now, I am convinced that G 1/15 will not explicitly overrule anything.
However I also have a little doubt in the reasoning of the EBoA in G2/98.
The EBA progressed to the conclusion as stated below through cross-checking the provisions of art.4F and H of the English text of the current Paris Convention:
“Since, according to Article 4H of the Paris Convention, an invention for which priority is claimed need not be defined in a claim of the application whose priority is claimed (cf. supra), an ‘element’ within the meaning of Article 4F of the Paris Convention represents subject-matter specifically disclosed be it explicitly or implicitly in the application documents relating to the disclosure, in particular, in the form of a claim or in the form of an embodiment or example specified in the description of the application claiming one or more priorities… This makes it clear that ‘element’ was not understood as a feature but as an embodiment.”
In this manner, the EBA determined, through contrary interpretation of art.4H of the Paris Convention, that the priority for a claim can be refused pursuant to the provision of art.4H of the Paris Convention if “elements” of the “invention” for which priority is claimed are not disclosed in the priority application. On the other hand, according to the provision of art.4F of the Paris Convention, it is not possible to refuse a priority on the ground that an application contains “elements” that are not included in the priority application. In order to concurrently satisfy these two provisions that are conflicting at first glance, it is necessary to understand “element” not as a “feature” but as an “embodiment”.
This logic presumes that the subject matter of a priority is necessarily limited to an “invention”. However, it is obvious in terms of grammar that, in “certains éléments de l’invention pour lesquels on revendique la priorité” in the French text of art.4H of the Paris Convention, the antecedent, which responds to relative pronoun “lesquels” in relative clause “pour lesquels on revendique la priorité”, is not “l’invention” but “éléments”.
Article 4H of the Paris Convention provides that “element” of the invention may become subject to priority, and it is a provision that forms a prerequisite for the multiple priority system and the partial priority system. However, the EBA interpreted the provision in a twisted way.
Dear Mr. Tim Jackson
DeleteI appreciate your all kindness. Since nobody had answered my question ever, I was deeply impressed.
There would be no problem with disregarding the “umbrella” theory in the case where the provision on the right of priority in the EPC is independently interpreted. This is because the EPC does not contain any provision corresponding to art.4F of the Paris Convention that stipulates partial priority:
“No country of the Union may refuse a priority … on the ground that an application claiming one or
more priorities contains one or more elements that were not included in the application or applications whose priority is claimed.”
In view of this, it may be possible to say that the conclusion drawn in the EBA Opinion G2/98 is not
erroneous since the matter referred by the President of the EPO to the EBA was the interpretation of the requirements for the “same invention” under art.87 of the EPC. However, it is a complete mistake that, in the interpretation of the Paris Convention mentioned in the said EBA Opinion as obiter dictum, the EBA interpreted “element” as “embodiment” and determined that the “umbrella” theory should be disregarded, I think.
One of the legislative intentions behind inventive step criteria that have been stipulated all over the world at the latter half of the 20th century relates to demarcation of the public domain and the exclusive domain. It is intended that exclusive rights should not be given to such technologies which can easily occur based on Public Domain technology. In case that the basic original invention does not belong to the public domain, an improved invention within the technical scope of the original basic invention does not belong to the public domain but belongs to the exclusive domain. If such an improved invention is rejected because it is obvious from the original basic invention, this does not fulfill the legislative intent of inventive step. However, in the case where the improved invention is not obvious from the basic original invention, if the improved invention was been made by others, such an improved invention would belong to the other right holder notwithstanding the exclusive domain of the original right holder. “Umbrella” theory gives a clear explanation of the right-relationship between an original inventor and the following people.
My personal views are as following:
https://www.dropbox.com/s/zo9utmcyavtm71z/AIPPI%20Journal%2C%20September%202008_p275.pdf?dl=0
http://information.patentepi.com/2-16/history-partial-priority-system-paris-convention/
@kaz-xmas:
DeleteI have read your well-written article in epi information with interest, but I do not fully agree with your positions.
In my view, Art. 4H of the Paris Convention only clarifies that the subject-matter for which priority is claimed need not be disclosed in the claims of the priority application but may also be present in the description. In other words, the priority document as a whole is what counts, not just its claims.
You are correct in stating that "certains éléments de l'invention pour lesquels on réclame la priorité" means that priority is claimed for "elements". But if you equate elements with embodiments, as the EBA did, then that seems to make sense.
Perhaps the best interpretation of "élément" is "part of the invention", a part for which priority may be claimed. If A+B is the invention, then A and B are not such parts. Typically A and B will not even be new, the invention is their combination. But if the invention is A or B, then both A and B are parts of the invention for which priority may be claimed separately.
On a somewhat different note, does it not follow from the travaux préparatoires of the various amendments of the Paris Convention that the possibility of claiming multiple priorities was introduced to prevent applicants from being obliged to file multiple applications, one for each priority document? Multiple priorities are then simply an administrative convenience, not a way to construct substantive rights that cannot be obtained otherwise. This also explains the requirement of unity: administrative convenience justifies bundling multiple unitary inventions, each with its own priority date, into a single application. There is no need to allow applicants to do the same with non-unitary inventions.
On my reading of the FICPI memorandum, essentially the same applies to the possibility created in the EPC to claim multiple priorities for a single claim. That possibility was not created to construct substantive rights that could not otherwise be obtained, but simply to prevent applicants from being required to draft multiple claims where a single "OR"-type claim could do the job just fine.
I do admit to being biased by familiarity with the EPC.
If such an improved invention is rejected because it is obvious from the original basic invention, this does not fulfill the legislative intent of inventive step.
I assume you are thinking of the case where the inventor or someone else publishes the invention during the priority year and before an application is filed for the improvement. So first he files for A and one year later he files for A and the improvement A+B. In the meantime, someone publishes A. We assume A+B is obvious over A.
If A is new and inventive, then he will get A. Under the EPC, he will not get the claim to A+B. But if he gets a claim to A, then that claim will anyway protect A+B. So I see no problem.
I suppose you see a problem in case A is not new or not inventive, B is not new and not inventive, but A+B would have been new and inventive without the publication of A.
But does the applicant really deserve a patent on A+B only because he has included non-inventive A in a priority document? I don't see much justification for that. The invention was not coming up with A, but coming up with A+B when not even A was known. But when filed for the first time for A+B, A was already known. So - objectively - he never invented anything. (Subjectively he may have made an invention, but that is not what counts.)
So to continue, if P1 discloses "coating the inner wall of pipes", then a claim (or "part" of a claim) will only enjoy priority from P1 if that claim (or that part) is the "same invention" as "coating the inner wall of pipes". If it is not, then P1 plays no role for that claim (or that part).
ReplyDeleteSo the claim as a whole (coating the inner wall of hollow bodies) does not enjoy priority from P1. A disclosure of "coating the inner wall of pipes" between the dates of P1 and P2 will be novelty destroying. However, with G 1/15 this can be overcome by making use of a partial priority to P1: you split the whole claim in "coating the inner wall of pipes" (priority from P1) and "coating the inner wall of hollow bodies not being pipes" (no priority, so gets the filing date according to G 1/15).
But now you have split up the claim and you are not making use of P2. What if there is a disclosure of "coating the inner wall of bottles" between P2 and the filing date? The "coating the inner wall of hollow bodies not being pipes" part, which did not benefit from any priority, is now dead.
I guess people will argue that you can split the claim for one piece of prior art and then unsplit the claim again for another piece of prior art, or perhaps split it again in a different way. Very flexible, but to me it makes no sense. And it becomes completely unmanageable if you want to argue lack of inventive step based on a combination of two documents, which are sometimes prior art and sometimes not, both or one or the other, based on how one (who?) decides to "split up".
See my posts elsewhere for why I don't believe that notional claim splitting is necessary.
DeleteYou are making use of P2. It discloses coating the inner wall of hollow bodies generically. Your claim is for the same invention: coating the inner wall of hollow bodies generically. This is a normal full priority. It protects you against a disclosure of "coating the inner wall of bottles" between P2 and the filing date.
I don't care how the reasoning is dressed up, provided the result is that we don't have to use boilerplate disclaimers!
DeleteI cannot see a practical difference between "notionally splitting" and your approach - both seem eminently sensible. Is it worth arguing over a difference that makes no difference?
The difference is that notional splitting ties people up in knots, as we can see here. Whereas the Enlarged Board's Order is much simpler. You have priority for what's properly disclosed in your priority application. No other conditions or limitations.
DeleteAnon - I think it would be a bit odd to say that being able to claim partial priority to a narrow alternative results in a loss of priority for the broad category, which is what (I think) you are saying.
ReplyDeleteI think your hypothetical disclosure of "coating the inner wall of bottles", after the filing date of P2 (but before a later case claiming priority from P1+P2) would not be prior art. "Coating the inner wall of pipes" has a valid claim to priority from P1, and the (rest of the) claim as a whole has a valid claim to priority from P2.
Otherwise the scope of protection obtainable may be different based on whether a boilerplate disclaimer (disclaiming each and every embodiment disclosed in P1) is included in P2, which seems like an utterly daft way to design a system. I guess it would not be the end of the world to have to do this, but I'd rather not have to.
It seems impossible to tell what the eBoA think about this without their reasons, but I am hopeful they will go this way.
Not sure why you think this is unworkable - it seems quite clear and simple?
What I am questioning is the allowability of splitting in different ways (or not at all) depending on what document you are comparing to.
DeleteIn the coating of inner walls example, the "hollow bodies" claim must be split up as "pipes" (date of P1) OR "hollow bodies but not pipes" (date of application) to protect against a publication of "pipes" with a date between P1 and the application.
If you now also have a publication of "bottles" with a date between P2 and the application, then that publication is novelty destroying for the part "hollow bodies but not pipes" (having the date of the application).
Of course the latter would be a very unfortunate result of G 1/15! Without the partial priority approach, "hollow bodies" would have priority from P2 and be protected against the later publication.
So the partial priority can bring benefits to the applicant, but can also work against him. Unless the applicant/proprietor is somehow free to select a splitting (or non-splitting) depending on the document that is cited against him.
The order of G 1/15 does not tell us how this is going to be handled. Will applicants/proprietors have the freedom to choose? Can they choose a splitting/non-splitting per document (perhaps even per combination of documents - very handy to frustrate inventive step attacks), or must they fix a splitting once and for all? Or could an opponent (or even ED) select a splitting and develop a partial priority attack for that splitting in order to kill a claim that until G 1/15 was untouchable?
There is "prior art" for this: T 1222/11. The partial priority attack there consisted in finding an earlier application for a part of the claimed subject-matter. This blew a hole in the priority document (which was "partially" not the first application). Because the earlier application had been published before the filing date and the priority was not valid for what the earlier application disclosed, the claim lacked novelty.
In T 1222/12 the proprietor did not get the option of not having the disclosure in his priority document be split (one part being in the earlier application, the other part not).
Anon: "What I am questioning is the allowability of splitting in different ways (or not at all) depending on what document you are comparing to."
DeleteYes, I'm also questioning the allowability of that. The solution is not to do so.
"The order of G 1/15 does not tell us how this is going to be handled."
That's right. We'll have to wait for the full reasoned decision, but I suspect the reason it doesn't tell you is because you won't need to do it. If you follow the G1/15 order, then you just look at what the priority documents disclose. And that's what you get priority for.
So irrespective of what your claim says, the priority shields it from the subject matter(s) in your priority document(s). To the extent that your European application relates to that subject matter, the date of the priority application counts as the date of filing. But you don't need to go through a separate exercise of splitting the claim to determine that. You just need to read the priority document(s).
You still get a result which depends on the priority documents - that's clearly essential. But it is just based objectively on what they actually disclose, with no debate about whether you should split the claim this way or that way.
Do you realise the improbability of your proposition, namely that the EBA first answers the question (in the order) and then at later point in time changes the question (in the reasons)?
DeleteBut let's try to work out your "shield theory" a bit (also known as "umbrella theory", developed in T 301/87 and rejected in G 2/98).
DeleteWhat you say is: if my application claims priority from P1, then any of my claims is protected against intervening disclosures of "the subject matter in P1".
What does that mean exactly?
Suppose P1 discloses metal and the application discloses metal. D1 published in the priority year discloses copper.
P1 does not disclose copper. So P1 does not shield against D1. Oops, my claim to metal is now not new.
So we have to amend your shield theory. P1 not only shields against intervening disclosures of subject-matter that is in P1, but against all intervening disclosures that are novelty destroying for any subject-matter that is in P1.
With this understanding, suppose P1 discloses metal and the application claims copper. Intervening document D1 discloses copper. D1 is novelty destroying for metal in P1, so P1 shields against D1. Oops, our claim to copper is now new, even though the inventor had not yet invented copper when he filed P1 and someone else disclosed copper before the application was filed. So this evidently does not work either.
So we have to amend the shield theory a second time. We take on board the idea that the subject-matter in P1 that protects us must be encompassed by our claim. So: if we have a claim to subject-matter A, which encompasses subject-matter B disclosed in P1, then the whole claim is protected against an intervening document D1 disclosing C, if C is novelty destroying for (i.e. encompassed by) B.
Now one problem is that you can save a claim by tacking it onto another claim.
P1: copper
D1: copper
claim 1: copper
claim 2: iron
Claim 2 does not encompass copper in P1, so D1 is citable against it. Let's suppose it renders iron obvious. Then you cannot get protection for claim 2 to iron. That seems correct.
Now redraft claims 1 and 2 as a single claim:
claim 1: copper OR iron.
This claim encompasses copper in P1, so D1 is not citable against it. We get protection for copper and we get protection for iron. But the inventor had not yet invented iron when filing P1, and in the meantime D1 has been published which renders iron obvious. That seems wrong.
More generally, the shield theory makes a bit of a mess of the state of the art based on which inventive step is to be examined. It is no longer defined simply by a date. That makes ascertaining the common knowledge and abilities possessed by the skilled person rather difficult.
The twice-amended shield theory might work OK if we restrict to novelty, which we could do when examining under Art. 54(3). But that means using different priority theories for Art. 54(3) on the one hand and for Art. 54(2)/56 on the other hand. That is difficult to justify. (Wouldn't it be easier to just reinterpret Art. 54(3) as not applying to poisonous divisionals and the like...)
"Do you realise the improbability of your proposition, namely that the EBA first answers the question (in the order) and then at later point in time changes the question (in the reasons)?"
DeleteThey won't be changing the question. All the Order does is to give a straight "no" to Question 1. Question 1 wasn't about how to rewrite or split the claim, just about whether there were any conditions for partial priority beyond the disclosure of the priority document. The answer is no, there aren't.
All the other questions then fall away. They only applied if there was a "yes" answer to question 1. In that case, you would need to know what further conditions applied. E.g. should you look to see if you can rewrite or split the claim into a limited number of clearly defined subject matters? (Question 2). If so, then how? (Question 3) - for example could it be a "metal minus copper" solution according to T1222/11 and T0571/10? If not, then what else? (Question 4)
But the answer to Question 1 is that there are no further conditions. Questions 2-4 do not need to be answered, let alone changed. Rewriting or splitting the claim is not the test.
"But let's try to work out your "shield theory" a bit (also known as "umbrella theory", developed in T 301/87 and rejected in G 2/98)."
No, umbrella theory is different. To avoid confusion with umbrellas, I wouldn't call it "shield theory" either.
As I understand it, umbrella theory was an old pre-EPC German doctrine. I believe they applied it to both AND- and OR-claims, and to both novelty and inventive step.
The FICPI Memorandum said that it is "probably recognized by everybody" that an AND-claim to A+B cannot enjoy a partial priority from a first priority document describing A alone. That's because the combination A+B is narrower than A alone, and that combination does not appear in the priority document.
G3/93 said the same (though their example was a claim to A+B+C which cannot enjoy a partial priority from a first application describing A+B). Later, G2/98 repeated it.
T301/87, meanwhile, had suggested (obiter) that an AND-claim A+B could claim some protection from a first priority application disclosing A alone, even though it wasn't entitled to its priority. There had been an intervening Article 54(2) publication of A alone, which was being used in an inventive step attack. (In such an AND situation, of course, mere novelty is irrelevant. A+B is novel over A alone.) However, this obiter suggestion was overturned by G3/93.
Thus, the old broad German umbrella theory is not valid for AND claims and inventive step attacks. I acknowledged earlier that what I am saying doesn't apply to either of those. It applies to novelty attacks against OR claims. There was a previous post in which I didn't make that sufficiently clear, and I apologise for any confusion.
"Now redraft claims 1 and 2 as a single claim:
claim 1: copper OR iron.
"This claim encompasses copper in P1, so D1 is not citable against it. We get protection for copper and we get protection for iron. But the inventor had not yet invented iron when filing P1, and in the meantime D1 has been published which renders iron obvious. That seems wrong."
I agree, it is wrong. This is an OR-claim (albeit not generic OR). The G1/15 Order works the same way as for your previous generic OR-claim to "metal".
There is a partial priority. To determine what it protects (or shields if you will), you look at the disclosure of the priority document. The priority document discloses copper, but not iron. That's what the partial priority protects. Since D1 is an Article 54(2) citation, not 54(3), the claim is open to an attack that iron is obvious from copper.
I gave a very similar example for your "metal" claim, except that I used aluminium instead of iron.
Anon - you seem under the impression that claims can only have a single priority date for the whole thing? Claims that have partial priority have alternatives with different priority dates. Each alternative of a claim should effectively be treated separately anyway, so I don`t see this as particularly burdensome.
DeleteYes, a claim considered "as a whole" can only have a single priority date. It will be the date of the priority document that first disclosed that "same" subject-matter (G 2/98).
DeleteAs far as I am aware, there has been no attempt in the EPO case law to fundamentally abandon the approach developed in G 2/98.
G 2/98 explains that a claim can have only one priority date with the sole exception of an "OR"-claim. If a claim has the form of "subject-matter A OR subject-matter B", then A and B can have different priority dates (or just the filing date).
In case the wording of the claim includes an explicit OR, then this obviosuly makes sense. The claim could be redrafted as two claims:
1. A
2. B
There is litte surprising in claim 1 having a different priority date than claim 2.
For claims 1 and 2 to be allowable, both claim 1 and claim 2 need to be new and inventive with respect to its own state of the art (as defined by their priority dates). So the same holds for the claim "A OR B": both parts need to be new and inventive with respect to each part's state of the art.
All of the above is relatively elementary and unproblematic. The complications start when you try to apply this to claims that could not be rewritten as two claims (because there is no Art. 123(2) basis for either A or B or both).
If you conceptually split in parts and then examine each part separately for novelty and inventive step, then your conceptual split effectively introduces real limitations that will play a role for novelty and inventive step, but which have no basis in the application.
Question 1 wasn't about how to rewrite or split the claim, just about whether there were any conditions for partial priority beyond the disclosure of the priority document.
ReplyDeleteCould you at least accept that T 577/13 intended its question 1 to be read in connection with its own definition of partial priority? The one that it spells out in its reasons?
See my response here.
ReplyDeleteI said that we don't know whether the Enlarged Board will agree with T577/13's definition.
However, I also pointed out that there is nothing wrong with that definition, because they were not trying to split the claim to determine a priority date for an artificial construct like "metal but not copper". I also showed how I believe G1/15 will deal with your multiple priority P1/P2 problem, without such an artificial construct.
Tufty, on an unrelated matter, I replied to kaz-xmas over the weekend, with a link to the minutes of the Munich Diplomatic Conference which he may find interesting. As far as I can see, it hasn't appeared. Has it fallen into a spam bucket? Thanks, Tim
Sorry about that. It was in the spam bucket. Should be posted now.
DeleteThank you.
DeleteHowever, I also pointed out that there is nothing wrong with that definition, because they were not trying to split the claim to determine a priority date for an artificial construct like "metal but not copper".
DeleteSo then let us take that definition:
"For the purposes of the present decision, the expression "partial priority" is used by the Board in a narrow sense (cf. Schricker (D29), point II.1, second paragraph; Memorandum, paragraph 38), to refer to the situation in which part of the subject-matter of a claim is entitled to the priority date of a single earlier application, whereas the remaining subject-matter is entitled only to the filing date of the subsequent European patent application."
I will not dispute now that the reasons of G 1/15 might surprise us or at least me. But I will proceeed now on the assumption that G 1/15 adheres to the understanding of "partial priority" expressed in the referral decision. That certainly is a reasonable assumption to make, even if it may turn out to be false.
P1 discloses copper.
The application claims metal.
According to the order of G 1/15, the claim enjoys a "partial priority" from P1 because "metal" encompasses "copper".
So now we apply our definition of "partial priority".
The "part of the subject-matter" is copper. This gets the date of P1 as effective date.
The "remaining subject-matter" is "metal minus copper". This gets the filing date as effective date.
Now apply Art. 89 EPC:
- the state of the art for "copper" is everything published before the date of P1.
- the state of the art for "metal minus copper" is everything published before the filing date of the application.
So (conceptual) "splitting" into artificial constructs is very much behind the partial priority approach considered in the referral decision. It is of course also the cornerstone of "Tufty's law".
Anon: "The 'remaining subject-matter' is 'metal minus copper'. This gets the filing date as effective date.
DeleteNow apply Art. 89 EPC:"
Why do you apply Article 89 EPC to subject matter which only has the filing date?
Everything in the application has at least the filing date, under Article 80 EPC.
The G1/15 Order tells you to check the disclosure of the priority document P1. As a result, you find that one part of the claim (copper) has a partial priority, in addition to its actual filing date under Article 80. This gives it an earlier effective date under Article 89, for the purposes of Articles 54(2), 54(3) and 60(2). It retains the actual filing date for other purposes. The remainder of the claim only has the actual filing date.
The whole source of your problem is that, after you have made your split, it is not possible to ascribe a partial priority date under Articles 87-89 to the resulting artificial "metal minus copper" construct. Yet in your current single priority example, there is no need to do so. In fact, it would be inappropriate to try.
See my previous IPKat link for how this also extends to the multiple priority situation.
Dear Tim Jackson
DeleteI read the minutes of Munich Diplomatic Conference. I also confirmed your comment that in a generic-OR situation partial priorities help for novelty but may not help for inventive step. Thank you very much indeed.
I had heard that Germany initially opposed the FICPI Memorandum and eventually withdrew its reservations. However I had not known the positions of Danish, Netherlands and the UK.
Is it a correct understanding that the member countries of the EPC decided to ignore the article 4F of the Paris Convention at the Munich Diplomatic Conference.
If so, why was T301/87 given?
When I read the minutes of Munich Diplomatic Conference, I thought that the Munich Diplomatic Conference was revival of the Washington Conference in 1911.
At the Washington Conference the proposal of introduction of multiple priorities met with the approval all members of the competent Sub-committee except for Great Britain. British representative objected that there would be practical difficulties owing to the different claims, and that it would be too complicated to establish whether the claims corresponded to the relevant prior applications. Although several delegates pointed out that certain countries such as Germany were already practicing the system without encountering any serious difficulties, the British opposition prevented the adoption of the proposed amendment to Article 4.
Dear k
DeleteParis Article 4F covers both multiple and partial priorities.
Multiple priorities are covered by Article 88(2) EPC. Partial priorities are covered by Article 88(3) EPC.
You may be interested in the discussion of the word "elements" in the FICPI Memorandum, pages 5-6, under the heading "II. Partial priority". It points out that this wording is unclear because the English, French and German versions have different meanings. Unfortunately, these differences originate in the Paris Convention itself.
Decision G2/98 also attempted to explain the meaning of "elements" (Reasons for the Opinion, point 4, second paragraph). It suggested "embodiments".
1911 was a very long time ago! I don't know the history, but probably the law has changed in lots of countries in the meantime.
Dear Tim Jackson
DeleteYes, I am interested in the proper interpretation of the word "elements." I had not read with the minutes of Munich Diplomatic Conference but I had already known the FICPI Memorandum.
You wrote “unfortunately, these differences originate in the Paris Convention itself.”
I know “elements”, “éléments” and “Merkmale”. I recognize the language barrier.
I think that three languages are equal condition in the EPC. The article 29 (c) of the Paris Convention, however, stipulates that in case of differences of opinion on the interpretation of the various texts, the French text shall prevail.
By the way, I met Mr. Matin D. Hyde who came to Japan in order to make a presentation concerning priority ten years ago.
I asked him the following question.
“Which word do you think is the antecedent of which, ‘elements’ or ‘invention’ in Art 4H of the PC ?”
He said proudly “off course it is invention.”
I asked “How about in French text?”
He said “ I can speak French well so that I can answer.” After he was thinking for a while, he said “It's strange, but that are éléments!.”
As I have already stated in the above comment, the EBoA progressed to the conclusion that elements are embodiments through cross-checking the provisions of art.4F and H of the English text of the current Paris Convention under understanding the antecedent of which is invention. (point 4, G2/98)
I think that the plain and ordinary meaning of “element” is feature. In fact, the opinion in G3/93 used the word "elements” as meaning of features. (Example, point 3, G3/93)
So I thought that member countries of the EPC decided to abandon adoption of multiple/partial priorities concerning “AND” claim at the Munich Diplomatic Conference.
You wrote “probably the law has changed”.
I agree with you. But the opinion in G2/98 stated “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.).” (also point 4, G2/98)
I think that there is few practices using OR claim nor generic OR claim in 1911, because only the US protect chemical compound. At that time, multiple priorities were typically used for AND claim, I guess. The reason is that the introduction of multiple priorities aimed combination of the original patent and additional patents. Additional patents are not questioned in terms of the inventive step from the rele¬vant publicly known fact concerning the original patent.
Please see page 4 of the below URL, but maybe you know well because the UK Patent Act used to have similar system.
http://pizzeys.com.au/Articles/Australian%20Patent%20System%20GuideED2.pdf
It is understood that the introduction of multiple priorities was aiming to prevent self-collision even if the original patent are publicly known.
Off course, we need to think that which system the best is under the current patent system. I think that umbrella-theory is suitable for Europe which is negative for introduction of Grace period system.
Grace period system make the first-to-file system lesser. But umbrella-theory dose not. Furthermore umbrella-theory promotes science and technology progress.
The opposition was filed against Dr. Yamanaka’s Human iPS European patent. One of the reasons was lack of inventive step based on Mouse iPS disclosed in “Cell” magazine. Fortunately the opposition was withdrawn. In this regard, please see the below diagram.
https://www.dropbox.com/s/fd50jcs4gjnkb8k/patent%20application%20for%20iPS%20Cells.pdf?dl=0
Regarding Human iPS invention, is there no value to obtain a patent?
What do you think?
I think that such self-collision prevent development of research academia.
Best regards
@Tim:
DeleteWhy do you apply Article 89 EPC to subject matter which only has the filing date?
Why are you unwilling to read to the end? We are not getting anywhere if you refuse to acknowledge my reasoning. Even if you do not agree with it, it does not help to pretend it is not there.
Do you disagree that it follows directly from G 1/15 plus point 8.2.1 of T 557/13 that in my example (P1: copper, application claims metal):
- the state of the art for "copper" is everything published before the date of P1.
- the state of the art for "metal minus copper" is everything published before the filing date of the application.
Do you disagree that G 1/15 plus point 8.2.1 of T 557/13 says: remaining subject-matter gets filing date? (Did you read point 8.2.1?)
Or do you disagree that "remaining subject-matter" is "metal minus copper"?
@kaz-xmas:
DeleteIt seems to me that the EBA gets the antecedent right in the first paragraph of point 4 of G 2/98:
"It follows that priority for a claim, ie. an "element of the invention" within the meaning of Article 4H of the Paris Convention, is to be acknowledged, if ..."
The EBA states that an individual claim is "an element of the invention" and that Art. 4H means that the subject-matter of a claim for which priority is claimed must be disclosed in the claims and/or description of the priority document for priority for that claim to be acknowledged.
In the 2nd paragraph the EBA does deviate slightly from the language of Art. 4H:
"Since, according to Article 4H of the Paris Convention, an invention for which priority is claimed need not be defined in a claim of the application whose priority is claimed (cf. supra), ..."
It should have said "an element of the invention for which priority is claimed". But I don't think it makes a difference in the context of point 4.
I think that there is few practices using OR claim nor generic OR claim in 1911,
But in my understanding, in 1911 they were not thinking of multiple priorities for a single claim but of multiple priorities for one application. Different claims could then have different priority dates. The advantage is that a single subsequent application could be filed for the original invention and for its improvements.
I think that umbrella-theory is suitable for Europe which is negative for introduction of Grace period system.
But the EPC states that inventive step is to be examined with respect to the state of the art and that the state of the art is "everything made available to the public before the (effective) filing date". So inventive step is examined with respect to a date, not with respect to a set of documents that first must pass the feature-based filter of the umbrella. The only filter that the EPC allows is the date-based filter.
So in my view the umbrella theory is fundamentally incompatible with the EPC (Art. 54(1), (2), 56, 89).
Regarding Human iPS invention, is there no value to obtain a patent?
What do you think?
Whether there is value in obtaining that patent or not, when the application was filed the "Mouse iPS" had been disclosed. From that point on, everybody was free to take Mouse iPS and make obvious modifications. So if Human iPS is indeed an obvious modification of Mouse iPS (which I don't know), then a patent on Human iPS can no longer be obtained after the publication of Mouse iPS. (Unless someone invented Human iPS and filed a priority application for it before Mouse iPS was published.)
For the EPC it is irrelevant whether it was the inventor of Mouse iPS who published Mouse iPS before the filing of the Human iPS application, or whether it was someone else. What is relevant is that Mouse iPS belongs to the state of the art for the Human iPS application. So self-collision is collision. There is no grace period (apart from the very limited one of Art. 55).
Anon: "Why are you unwilling to read to the end? We are not getting anywhere if you refuse to acknowledge my reasoning. [...]
DeleteDo you disagree that G 1/15 plus point 8.2.1 of T 557/13 says: remaining subject-matter gets filing date? (Did you read point 8.2.1?)"
I did read to the end. I did read 8.2.1. And I not only acknowledged your reasoning, but I've also repeatedly explained why I disagree with it.
That explanation is in the very post you are replying to. It's even in the question you quote from it.
As you rightly say, T 557/13 refers to the remaining subject matter having only the filing date. Yet you are trying to apply Article 89 EPC to it.
Article 89 describes the effect when something has priority. But you are applying it to something which doesn't have any priority, only the filing date. And which doesn't need any priority. Everything in the application is automatically entitled to the filing date.
Then you describe the problems which result from your approach, and complain that I've not provided any answers to them.
And you're right, I haven't. Instead, I've repeatedly explained that I believe your approach is wrong. And what I believe is the correct approach, following the G1/15 Order. Magically your problems then disappear, with no need to answer them.
So, I've explained that trying to ascribe a priority date to "metal minus copper" is not what you should do. (And it's not what T 557/13 does either -- it says the remaining subject matter only has the filing date, not a priority date.)
I've explained that not only in the post to which you are replying, but also earlier, for example when I referred you to my similar IPKat comment (second half of the post).
My IPKat post also explains what I believe should be the approach for your multiple priority example, and the following post deals with the "not the first application" issue.
But you haven't addressed any of that. Anon, I think you're right when you say this discussion is not getting anywhere.
To Mr. Anonymous
DeleteI appreciate that you analyzed my comment thoroughly.
>It should have said "an element of the invention for which priority is claimed".
Yes ! The EBA states that "l'invention pour 'laquelle' est revendiquée la priorité" in the second paragrph of point 4 in G2/98 French version.
http://www.epo.org/law-practice/case-law-appeals/recent/g980002fp1.html#q
Article 4H, however, states that "certains éléments de l'invention pour 'lesquels' est revendiquée la priorité". If understanding French text of the Article 4H grammatically, it can be understood that the antecedent of "lesquels" est revendiquée la priorité is not invention but elements.
>But I don't think it makes a difference in the context of point 4.
I rather mind that the EBA starts analysis in the premise that subject of priority is directed to only the claimed invention. However if we understand units (features) of the claimed invention can be the subject of priority, Article 4F and Article 4H is not contradict even if elements are features.
>Multiple priorities for one application.
Yes! In that era, French patent law did not have claim, and Swiss patent law admitted only single claim. So the common idea of multiple priorities is definitely for one application.
>The advantage is that a single subsequent application could be filed for the original invention and for its improvements.
Yes! So in that era, it was common that applicant file a single subsequent application after the original patent was granted and publicly known. In those days, there were no uniform criteria of inventive step and application (18 months) publication system. Furthermore, systems that were common, at that time after introduction of criteria of inventive step, were such that, 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 (provided that novelty is required) . I think that Section 26(7) of the Patents Act 1949 stipulated same manner. So in that era, self-collision never happened even if the original patent invention was publicly known during priority period.
>So inventive step is examined with respect to a date, not with respect to a set of documents that first must pass the feature-based filter of the umbrella. The only filter that the EPC allows is the date-based filter.
Yes! I think so. However, inventive step is examined with respect to a set of documents that first must pass the feature-based filter of the umbrella under stipulations Article 4B and 4F of the Paris convention.
>The umbrella theory is fundamentally incompatible with the EPC (Art. 54(1), (2), 56, 89).
I agree with you. But the fiction theory is fundamentally incompatible with the PC (Art. 4B, 4F, 4H).
Especially the stipulation of Art 89 of the EPC and Art 4B of the PC are different. And the EPC does not contain any provision corresponding to Article 4F of the Paris Convention that stipulates partial priority—“No country of the Union may refuse a priority ... on the ground that an application claiming one or more priorities contains one or more elements that were not included in the application or applications whose priority is claimed.”
I think that Opinions G3/93 and G2/98 are not erroneous since the matters referred by the President was the interpretation of priority under the EPC. But concerning the PC I wonder if such interpretation is appropriate or not.
Sorry! After finishing this comment, I found your comment at 10 December 2016 at 18:14. I very much appreciate that you had read my article in epi information.
In near future I will comment back. I am sorry; I have a big barrier for English reading and writing.
I did read to the end. I did read 8.2.1. And I not only acknowledged your reasoning, but I've also repeatedly explained why I disagree with it.
DeleteAnd that is why our are still pretending that I am trying to assign a date other than the filing date to "metal minus copper"?
I have been rather insistent in pointing out that in the T 557/13 / G 1/15 approach "metal minus copper" gets the filing date.
You have consistently tried to assign the date of P2 to "metal minus copper". Your problem then comes when you find that you can't do it, because P2 doesn't explicitly disclose "metal minus copper". Your explanation of the problem is that "metal minus copper" only has the filing date. So you think that a publication of iron after P2 but before the filing date would be novelty-destroying.
DeleteBut you don't need to do any of this. Ignore "metal minus copper". It's irrelevant. Under G1/15's Order, splitting the claim like this and asking about the date of "metal minus copper" is not how you should determine a partial priority.
OK, so T 557/13 says the remainder of the claim has the filing date (but not under Article 89 as you suggest). So what? It doesn't matter whether it has any date at all.
Just follow the G1/15 Order. Partial priority for a generic OR-claim depends entirely on what is properly disclosed in the priority documents. And nothing else. No other conditions or limitations apply.
In particular, it doesn't depend on conditions such as whether and how you can ascribe a date to "metal minus copper".
The condition in point 6.7 of G2/98 (that you should be able to split the claim into a limited number of clearly defined alternative subject matters) has been overruled. G1/15 says that there are no such conditions.
You have consistently tried to assign the date of P2 to "metal minus copper".
DeleteI have consistently been careful in specifying the example I was talking about. This thread had no P2.
But you don't need to do any of this.
But I do, because I cannot expect the EPO to throw out their 40-year old approach to priority completely in favour of yours.
OK, so T 557/13 says the remainder of the claim has the filing date (but not under Article 89 as you suggest). So what? It doesn't matter whether it has any date at all.
In your theory OR claims play no role. In the EPO's theory OR claims are the key to solving poisonous priority.
The whole point of an OR claim is that both parts must be new and inventive for the claim to be new and inventive.
Or how Tufty worded it some time ago:
Let's say a claim is directed to a widget made of copper or iron, and the priority document discloses only copper. The claim is entitled to priority only for the copper widget, but the claim can be rewritten anyway to: i) a widget made of copper; and ii) a widget made of iron. The first claim would be entitled to priority, and therefore not at risk if a divisional is filed, while the second lacks a valid priority claim but is novel over the priority disclosure, so would also not be at risk. [...]
To take a slightly more complicated example, let's say claim 1 is directed to a widget made of metal, and the priority document only discloses widgets made of copper. The claim cannot easily be divided into two from the wording alone, but can at least theoretically be considered to be two claims: i) a widget made of copper; and ii) a widget made of a metal other than copper. These claims together have the exact same scope as the original claim. As before, the first claim is entitled to priority and is therefore not at risk if a divisional is filed, while the second claim is novel over the priority disclosure and is therefore also not at risk.
The concept that a broad claim can theoretically be divided into two parts, one of which is entitled to priority and the other which is inevitably novel over the priority disclosure, is itself sufficient to overcome the problem even if the exact form of wording is not easily derived from the application.
Every time, both parts of the claim have to be considered. And nothing that we know so far about G 1/15 (such as its order, the referral decision and the decisions cited in support of the partial priority approach) suggests that the solution as stated by Tufty will not be followed.
Under G1/15's Order, splitting the claim like this and asking about the date of "metal minus copper" is not how you should determine a partial priority.
That is your personal opinion and you are entitled to it, but the odds are pretty overwhelming that it will not be confirmed by G 1/15. So stating that I or anyone else "should" determine partial priority in accordance with your personal opinion is not necessarily the best advice.
Of course we should still wait for G 1/15 to draw definite conclusions. But it will be interesting to test its solution against some of the examples we have seen here.
@kaz-xmas:
DeleteI think we agree on many things now!
In particular, I think we agree that if you are right about Art. 4B Paris Convention, then the EPC is in conflict with the Paris Convention.
We might not agree on this: I think the Paris Convention can be read in the way the EBA read it in G 2/98: element = subject-matter (and not feature). In this case, the EPC seems to comply with the Paris Convention.
My argument is that partial priority just means that an applicant is allowed to include in the subsequent application a description of further improvements and claims to those improvements. Without partial priority, he would have to file two applications: one claiming priority with essentially the same content as the first application and one not claiming priority and describing and claiming the improvements. Having to file two applications on unitary inventions is inconvenient, and thanks to partial priority it is not needed.
You agree with this, BUT you say that in the inconvenient scenario where the inventor files two applications, one being the subsequent application identical to the first application and the other describing and claiming the improvements, that other application in those days would have been a "patent of addition"! So partial priority should not have the effect that the improvements contained in the single subsequent application are treated worse than if they had been filed in a patent of addition.
OK, I have to think about this a bit.
" I cannot expect the EPO to throw out their 40-year old approach"
DeleteTrying to determine a priority date for an artificial construct such as "metal minus copper" is not the EPO's 40-year old approach.
Even splitting the claim into "a limited number of clearly defined alternative subject matters" is only just over 15 years old. (G2/98 is dated 2001.)
Tufty's split into "copper" and "metal minus copper" dates from about 2013, as I recall (though I'd be happy to be corrected).
The similar suggestions in T1222/11 and T0571/10 date from 2012 and 2014.
A point of order:
ReplyDeleteI'm happy for there to be a discussion here about what the G 1/15 order might mean in practice, and other related issues. This is, however, not the place to make ill-informed comments. I expect commenters to at least have read some background on the subject before making their point. I will moderate accordingly.
Dear Tufty
DeleteI am sorry for writing too much. Over the past decade, however, I have researched on this topic since before the timing toxic priority occurred. I hope that lots of European practitioners know the facts which I explored.
Finally I put the article by Dr. Gerhard SCHRICKER which provides lots of information concerning multiple/partial priorities under the Paris Convention.
https://www.dropbox.com/s/5lla0plskuy5fs2/Industrial%20Property%201967%20No.5.pdf?dl=0
Sincerely yours
My point was not directed at you, but another commenter who clearly had not done any background reading.
DeleteTo Everybody
ReplyDeleteI recognize that my thinking is not realistic, but only the EBoA can overrule the previous G opinion. So I cannot help expecting it even the possibility is almost zero.
May I ask some questions under realistic situation?
Please suppose the first application discloses A+B and one year later priority is claimed in an application claiming A+B+C. During the priority year, a document disclosing A+B was published. Suppose feature C is a trivial modification. The publication of A+B before the filing date of A+B+C can be cited against A+B+C. Since C is a trivial modification, the claim to A+B+C will fall. So, it’s OK!
Continuously suppose the applicant deleted the claim of A+B+C after received a notification of rejection. Then the claim of A+B was granted. A few years later the third party worked the invention of A+B+C.
Can the patent owner of the invention A+B exercise of his rights?
Or is he restricted on exercise of his rights due to estoppel?
As I do not know the litigation practice in Europe, please somebody teach me.
If he would be restricted, he would have better not file an application claiming A+B+C. However can such system promote progress of technology?
Can the patent owner of the invention A+B exercise of his rights?
DeleteYes, producing and selling A+B+C infringes the patent on A+B. That the patent owner has also filed for a patent on A+B+C (or at some point had a dependent claim to A+B+C) is irrelevant.
If he would be restricted, he would have better not file an application claiming A+B+C. However can such system promote progress of technology?
But in Europe such a system does not exist. Of course there are many European jurisdictions and I am far from familiar with all of them, but I cannot imagine that any of them has an estoppel rule that does not make sense in the European system.
Thank you very much for teaching me.
DeleteI understood that there is not an estoppel rule in this case at least UK litigation practice. The patent owner of the invention A+B can exercise of his rights, can’ t he? But in this situation, I do not know what it means to reject his application for an invention A + B + C.
Is it worth rejecting?
Since A+B+C gets the filing date and the state of the art at the filing date makes it obvious, an application claiming A+B+C must be rejected. (But the application will have the opportunity to delete the claim.)
DeleteIf A+B is in the same application and is inventive because it happens to have priority, then it may seem funny that the applicant can claim A+B but not A+B+C, but this is how the law works. I don't see anything unjust about it.
If the situation is the other way around (priority discloses A+B+C and the application claims A+B) then arguably it is unjust if the applicant loses A+B only because he disclosed A+B+C in his priority document (and that prior art becomes Art. 54(3) prior art for the purpose of novelty through a poisonous divisional).
But even with the poisonous priority problem being solved by G 1/15 (most likely), the applicant will continue to lose A+B if he published A+B+C in the priority year.
(Well... we will have to see what happens. It seems he would be able to split his A+B claim into (A+B+C) OR (A+B without C), A+B+C would be prior art only for the part (A+B without C). That part will be new over A+B+C, but not inventive if it would somehow be obvious to remove C or replace C with C'. So likely he will still lose A+B, but there might be cases where he could profit from the inventiveness of "not C".)
>Since A+B+C gets the filing date and the state of the art at the filing date makes it obvious, an application claiming A+B+C must be rejected.
DeleteI understand its reasoning under Article 87 and 89 of the EPC. Article 87 stipulates priority in respect of the same invention. Article 89 stipulates that the right of priority shall have the effect that the date of priority shall count as the date of filing of the European patent application for the purposes of Article 54, paragraphs 2 and 3, and Article 60, paragraph 2. It seems to be time shift effect.
The effect stipulated in Article 4B is, however, feature-based filter effect, I think. It is not necessary the invention in Article 4B is always same as the invention in Article 4H of the Paris Convention. The invention in Article 4B is capable to be the elements for which priority is claimed in Article 4H.
By the way, section 6 of UK Patents Act 1977 reads as follows:
(1)It is hereby declared for the avoidance of doubt that where an application (the application in suit) is made for a patent and a declaration is made in accordance with section 5(2) above in or in connection with that application specifying an earlier relevant application, the application in suit and any patent granted in pursuance of it shall not be invalidated by reason only of relevant intervening acts.
(2) In this section―
"relevant application" has the same meaning as in section 5 above; and
"relevant intervening acts" means acts done in relation to matter disclosed in an earlier relevant application between the dates of the earlier relevant application and the application in suit, as for example, filing another application for the invention for which the earlier relevant application was made, making information available to the public about that invention or that matter or working that invention, but disregarding any application, or the disclosure to the public of matter contained in any application, which is itself to be disregarded for the purposes of section 5(3) above.
It seem for me that section 6 (2) stipulates feature-based filter effect more precisely than the Paris convention.
Tuffty, Mr. Tim Jackson, Anon and all patent attorneys in the UK.
I don’t know the judgment which changed the interpretation of section 5. Please somebody teach me. Which judgment did change the interpretation of section 5? How was the reasoning?
Needless to say, umbrella-theory in Germany is feature-based filter effect.
Furthermore, Article 7(3) of Dutch Patent Act 1956 reads as follows:
De voorrang kan niet worden geweigerd, op grond dat voor de uitvinding meer dan een recht van voorrang als in dit artikel bedoeld wordt ingeroepen. Evenmin kan de voorrang worden geweigerd , op grond dat voor de uitvinding of voor enig gedeelte daarvan, waarvoor het recht van voorrang wordt ingeroepen, niet uitdrukkelijk een uitsluitend recht verlangd is in de aanvrage in het land van oorsprong, mits die uitvinding of dat gedeelte in de tot deze aanvrage behorende stukken zo nauwkeurig is geopenbaard, dat die uitvinding of dat gedeelte daaruit door een deskundige kan worden begrepen en aan de hand daarvan toegepast.
It seems for me that the article stipulates feature-based filter effect.
Dear Peter, if you read this comment, please teach me. Have you reached concrete idea whether “gedeelte” is a feature or an embodiment?
I think that among umbrella- theory in Germany, the old interpretation of section 6 of UK Patents Act and article 7(3) of Dutch Patent Act 1956 there is something in common.
It is feature-based filter effect in respect both extension amount and inclusion amount.
The likelihood of the EBA resiling from its own earlier opinion is not zero. Isn't that what it did already, on the subject of who can legitimately oppose a patent at the EPO?
ReplyDeleteYou (kaz-xmas) postulate a situation which you see as "realistic" but I don't.
Priority document claims A+B. PCT (or direct filed at the EPO) does not. Instead, it claims nothing wider than A+B+C, where "C" is "trivial".
Then, when the EPO search reveals publication of A+B in the priority year, Applicant reverts to claiming A+B, in order to benefit from the priority date.
Who in their right mind fails to claim A+B in the as-filed PCT, given that C is so trivial that it yields no improvement in patentability over bare A+B?
I am replying to the message from Mr. Anonymous on 10 December 2016 at 18:14.
ReplyDeleteAdding to your view, my view is that Art. 4H of the Paris Convention is formed to be the premise of multiple/partial priority. The subject-matter of the right of priority stipulated in the authentic text (French text) of the Convention is not always limited to the invention itself but also can be a part of the invention. And I think that if A+B is the invention, then A and B can be such parts (not always). In this regard, Dr. Francis Gurry, Director General of the World Intellectual Property Organization (WIPO) et al. describe as follows:
Since an invention builds on the prior art, it is possible that it combines features from several different applications that have been filed by the same applicant. Is it possible to claim multiple priorities based on previous applications, or to claim a partial priority for an element of an invention, based on a previous application, while claiming no priority for the rest of the application? …Multiple priorities enable an applicant to claim different prior applications (within the preceding twelve months) in the same application, but the applicant has the advantage of priority for each “invention” or element of an invention only from the date of the corresponding earlier application.
Fredrick Abbott, Thomas Cottier and Francis Gurry, The International Intellectual Property System: Commentary and Materials, Kluwer Law International (1999) p.678, 685.
I provide you with evidences that elements should be understood as features under the Paris Convention (not under the EPC).
The draft prropsal of Art. 4F was 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.
During the discussions in the second committee of the Conference, the word “new elements” was controversial. The delegation from the Netherlands stated as follows:
Moreover, it is not desirable to speak of new elements, because the word “new” in the field of patent law, the special meaning of "new compared to the state of the art”.
Please see the below document. (Pages 341 and 343)
https://www.dropbox.com/s/5jl1q81wi81zonn/Lisbonne_1958%20Partial%20Priority.pdf?dl=0
Before examination revealing, at least the inventor believe embodiments new. When thinking that Art. 4F adopted not “new elements” but “one or more elements that were not included in the application or applications whose priority is claimed”, don’t you think it is quite natural feeling that elements are not embodiments but features?
Furthermore the draft proposal of Art. 4J was as follows:
1. The grant of a patent may not be refused on the ground that the elements of the invention which are the subject of the application have been disclosed by a person other than the inventor or his representative within six months the demand.
2. The same provision shall apply where the disclosure is made by the inventor himself or his representative, subject to such restrictions as may be imposed by the national law of the country in which the patent application is made.(my translation)
The Proposal with Statement of Reason states as follows:
The inventor is often obliged to disclose certain elements of his invention before realizing that further work is necessary. (my translation)
When reading the phrase “disclose certain elements of his invention before realizing that further work is necessary”, don’t you think it is quite natural feeling that elements are not embodiments but features?
Please see the below document. (Pages 349 and 350)
https://www.dropbox.com/s/4wn4wq3dlnnr2pl/Lisbonne_1958%20Grace%20Period.pdf?dl=0
Moreover, the opinion in G3/93 used the word "elements” as meaning of features. (Example, point 3, G3/93)
Again, don’t you think it is quite natural feeling that elements are not embodiments but features?
(To be continued)
> I suppose you see a problem in case A is not new or not inventive, B is not new and not inventive, but A+B would have been new and inventive without the publication of A.
ReplyDeleteI found this problem 8 years ago after finishing the below article.
https://www.dropbox.com/s/zo9utmcyavtm71z/AIPPI%20Journal%2C%20September%202008_p275.pdf?dl=0
I have been waiting someone point the problem, so I am very pleased with your comment.
The case which you set is seems that there is a secret prior art A, I think. When multiple priorities system was introduced to the Paris Convention in 1934, secret prior art used to be examined under not the whole contents approach but the prior claim approach. The above-mentioned case was not imagined under multiple/partial priorities systems.
So we must modify the interpretation of Art. 4B of the Paris Convention. I think that the publication of “A” based the third parties prior application is not purely acts accomplished in the interval because the applying act was made before the interval. In this case umbrella-theory should not work.
I would like to say that priority system in the EPC pursuant to fiction-theory has a certain order. I will not deny the situation. And again I would like to say that opinions G3/93 and G2/98 are not erroneous because the questions are concerning priority system under the EPC.
I would like the EBA to admit that the EPC started deviating from the Paris Convention. It is no problem because the European Patent Organization is not a member of the Paris Union.
However, the EPO has big influence to the worldwide patent system including the PCT. The practice in the EPO affects the PCT practice.
If you read 6.07 of the TRAITÉ DE COOPÉRATION EN MATIÈRE DE BREVETS (PCT), you can find strange phrase as follows:
Il doit aussi se souvenir que pour établir une date de priorité, il n’est pas nécessaire que tous les éléments de l’invention pour [[laquelle]] la priorité est revendiquée figurent parmi les revendications de la demande antérieure. Il suffit que l’ensemble des pièces de la demande antérieure divulgue ces éléments.
On the other hand the BODENHAUZEN states as follows:
Il suffit, pour que le droit de priorité puisse être revendiqué dans une demande ultérieure, que les éléments de l'invention pour [[lesquels]] la priorité est revendiquée soient révélés d'une façon précise dans les pièces de la demande antérieure considérées dans leur ensemble (comprenant donc la description de l'invention, les dessins s'il y en a, les diagrammes, etc.).
So I would like the EBA not to involve another member of the Paris Union. And I would like the EBA to declare the deviation of the EPC from the Paris Convention.
If not so, I would like the EBA to consider Art. 4H of the Paris Convention in the context of Article 29(1)(c) of the Paris Convention. I also would like the EBA to consider the difference between Article 4B of the Paris Convention and Article 89 EPC in the context of Article 19 of the Paris Convention.