tag:blogger.com,1999:blog-4665971923360779136.post1948947215443007794..comments2024-03-25T10:31:40.979+00:00Comments on Tufty the Cat: UNION-IP Roundtable on Patent PriorityTufty the Cathttp://www.blogger.com/profile/09803006996232662500noreply@blogger.comBlogger4125tag:blogger.com,1999:blog-4665971923360779136.post-31867425928773540142016-03-01T14:22:26.695+00:002016-03-01T14:22:26.695+00:00I couldn’t agree with you more.
In point 4 of the...I couldn’t agree with you more.<br /><br />In point 4 of the Reasons in 2/98, it was explained that “The possibility of claiming multiple priorities was introduced into the Paris Convention in order to avoid improvements of the original invention having to be prosecuted in applications for patents of addition.”<br /><br />In Australia, a Patent of Addition can be granted for a non-inventive “improvement or modification” notwithstanding the earlier publication of a “main invention” by the same inventor(s). Publication of the “main invention” between the priority date of the application for the main invention and the priority date of the application for the “improvement or modification” is excluded from the prior art base for the purpose of assessing the obviousness of the “improvement or modification. ”<br />http://www.ipo.org/wp-content/uploads/2013/03/Bennett_AU_Patent_Guide.pdf<br />(Please see page 4.)<br /><br />Section 26(7) of UK Patents Act 1949 stipulated validity for patents of addition in the same manner as the current Australian Patent Act.<br />http://www.wipo.int/wipolex/en/text.jsp?file_id=127260<br /><br />If the effect of claiming multiple priorities is same as the effect of filing patents of addition, even publication of the original invention will not constitute prior art citable under Article 54(2).<br /><br />Article 54(3) goes without saying.<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-4665971923360779136.post-835756388559302872016-03-01T00:14:50.742+00:002016-03-01T00:14:50.742+00:00"Literal" approach vs. "conceptual&...<i>"Literal" approach vs. "conceptual" approach</i><br /><br />A better approach would be for the Enlarged Board to say that "a limited number of clearly defined alternative subject-matters" is not the correct test. Question 1 of the referral invites this - all they need to do is say "no".<br /><br />There would then be no need to argue whether the alternative subject-matters should be viewed literally or conceptually.<br />Tim Jacksonnoreply@blogger.comtag:blogger.com,1999:blog-4665971923360779136.post-1761519669413952722016-02-29T13:58:25.844+00:002016-02-29T13:58:25.844+00:00I am sorry for message butting in.
I agree to yo...I am sorry for message butting in. <br /><br />I agree to your prediction that there will be many priority challenges based on the "first application" requirement. The EPC aside, however, the Paris convention stipulates this situation naturally. <br /><br />Namely, BODENHAUSEN explains as follows:<br /><br />“[I]f an even earlier application as a whole has already specifically disclosed these elements, that application will be considered the first application and priority cannot be recognized on the basis of the application mentioned earlier.”<br />Please see Section H (d) on page 58.<br />http://www.wipo.int/edocs/pubdocs/en/intproperty/611/wipo_pub_611.pdf<br /><br />With regard to case of partial priority in Germany, in “Prioritätsdisclaimer” case (BpatG 30.4.2003; GRUR 2003,953), BpatG stipulates as follows:<br /><br />“If in a patent the priority of an earlier application has not been validly claimed, because the patent claim includes a feature which extends beyond the content of the earlier application, and if moreover the subject matter of the claim is not patentable if the filing date with the German Patent and Trademark Office is considered the date relevant for the state of the art relating to the patent, the patent may still be maintained in a limited form if a) the patent claim comprises a sub-combination disclosed in the priority document and b) a declaration is introduced into the patent claim stating that the feature in question extends beyond the content of the earlier application and that the feature cannot support patentability of the patent claim based on the priority of the earlier application.”<br /><br />I think that this logic is consistent with the explanation of Section 4F (d) on page 54 of BODENHAUSEN. However, the logic was denied by EBoA in G3/93. <br /><br />Patent practitioner in some Asian Country<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-4665971923360779136.post-81600838302806716472016-02-28T17:15:51.516+00:002016-02-28T17:15:51.516+00:00Dear David,
Many thanks for this interesting re...Dear David, <br /> <br />Many thanks for this interesting report. I have two comments on this topic. <br /> <br />First, I do not think it is correct that there has been no case of partial priority in Germany. A few years ago I had the opportunity to work on a multinational litigation brought by Novartis against Johnson & Johnson on contact lenses. Claim 1 of the patent contained a functional definition of contact lenses. Three priorities were claimed. The priority documents contained examples of contact lenses but not the general functional definition. The Bundespatentgericht held that the priorities were invalid and that the patent claims were not novel over the priority applications. The decision (in German) can be found here: http://juris.bundespatentgericht.de/cgi-bin/rechtsprechung/document.py?Gericht=bpatg&Art=en&sid=45af6b31255d7c46f0c33fcc1dfce842&nr=17351&pos=2&anz=3&Blank=1.pdf<br /> <br />Second, when you look at T 1222/11, where the conceptual approach was used, you realize that the application was ultimately refused, due to a priority issue. More specifically, the Board found that the priority document was not the "first application" for the invention. So, in this case, the conceptual approach is what killed the application. My prediction is that if the Enlarged Board embraces the conceptual approach, there will be no more toxic divisionals, but there will be many more priority challenges based on the "first application" requirement. I have commented on this topic here: http://patentmyfrench.com/one-k-o-for-kao/<br /><br />Renaud. Anonymousnoreply@blogger.com