Saturday, 5 February 2011

Article 54(3) and EP Divisionals

According to Article 54 EPC, an invention is new if it does not form part of the state of the art, which is everything that has been made available to the public before the filing date of the application.  Under Article 54(3), the state of the art also includes the content of another European application having a filing date before that of the application but which was published on or after the filing date of the application.  This second definition is however only used when considering novelty, and not for inventive step under Article 56.

If a European application validly claims priority to an earlier filed application, this has the effect that the filing date of the earlier application counts as the filing date of the application.  This applies to both Article 54(2) and (3). 

All this means that an earlier (first) European application could be used as prior art for a later filed (second) European application that claims priority to the first one, if that priority claim is invalid (and provided the first application is also published).  This could happen, for example, if the first application disclosed and claimed only specific examples, while the second application claimed an invention more generally.  Claims of broader scope might therefore not have a valid claim to priority.  Consequently the earlier application, disclosing examples falling within the scope of the later broader claim, could provide a novelty-defeating prior disclosure.  

Normally this would be correctable, as it is usual to make sure that all of the material from the first application is included in the second.  The applicant could, for example, narrow the scope of the claims in the second application so that they do have a valid claim to priority.  In some cases, however, this might not be possible, or desirable.  To come up with a far-fetched hypothetical situation to illustrate this, let's say that a first EP application discloses an invention incorporating a range from 0.325 to 0.415 (the units don't matter), while a second EP application, claiming priority to the first application, discloses and claims only a range from 0.330 to 0.415.  The claim to priority is invalid because the range in the second application is not present in the first one, meaning that the claim to priority is not for the same invention (Article 87(1)(b) EPC).  The first application, having an earlier filing date and having been published after the filing date of the second, is therefore prior art under Article 54(3).  Since the first application discloses a range that entirely encompasses the second, and the difference between the two ranges is very small, the claims in the second application are not novel (although this is possibly an arguable point). 

Although far-fetched, this is the actual situation that gave rise to decision T 680/08, which issued in April 2010. The decision has already been commented on by others here and here.  The issue has also arisen before in T 1443/05. In both cases, the solution to the problem was (possibly dubiously) to include a disclaimer.

Cases where the priority filing can cause problems for a later filed application may be fairly rare.  However, the principle in T 680/08 might, according to some interpretations, apply also for divisional applications.  According to Malcolm Lawrence and Marc Wilkinson of HLBBshaw, a divisional application could effectively 'poison' its own parent if it turns out that the parent is not entitled to priority.  The reasoning (which, in the HLBBshaw article, is very long-winded) is based on the divisional application being citable under Article 54(3) against its parent as a result of it having an earlier filing date (due to the priority claim) than the parent application (which lacks the priority date).  The ramifications for this would, naturally, be quite serious. But is this reasoning even plausible?  

The issue also came up during opposition proceedings relating to EP0846450, although was not key to the patent being eventually revoked.  The question of whether a priority document could be used as Article 54(3) prior art was considered by an expert called by the patentee, Professor Dr.-Ing. Ulrich Vollrath, a professor of patent law at the Rheinian-Westfalian University of Technology (his contribution, which is well worth reading, can be found here).  When asked whether a part of a European patent application enjoying priority of an earlier US application under Article 87 or 89 EPC could be novelty-destroying for claims of the same application not enjoying priority, his firm answer was no for the reason that there had to be two applications for there to be a conflict.  However, in answer to a further question of whether the outcome would be any different if the claims not enjoying priority had been divided out of the European application enjoying priority, his answer was also no because, in the case of divisional applications, for the purposes of examination of priorities and the resulting effects the parent and divisional applications had to be considered as if all claims remained in the same application.  There would therefore be no earlier application to be considered, as both would be effectively the same application.  Both had to be considered to be interchangeable, having equal footing as a result of a procedural split between them.  What was admissible in the former application could not become inadmissible just by filing a divisional.

I am much more persuaded by the arguments of Professor Vollrath than those of Messrs Lawrence and Wilkinson.  However, I may be wrong.  What are the chances that an EPO board of appeal, tasked with a suitable fact situation, would consider a divisional application to be Article 54(3) art for its own parent?  I would think very slim, but not impossible.  What do you think?

UPDATE 18 August 2015: The above post has been cited in a referral to the Enlarged Board of Appeal regarding the issue of partial priority and poisonous divisionals. For more information see my recent post here


  1. I know in the UKPA there is specifically s.5(2)(a) which is about inventions, and s.5(2)(b) which is about subject matter ... but I don't know if there are corresponding bits in the EPC, or if it answers the question anyway. And unfortunately I need to run to catch a train!

  2. I've been delaying studying the latest case because I felt sure this would be a non-issue based on the wording of the Paris Convention:

    "No country of the Union may refuse a priority or a patent application ... 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, provided that, in both cases, there is unity of invention within the meaning of the law of the country."

  3. Yes, 4F is the one. My ongoing analysis is as follows:

    1. EPC A.87(1) provides for a right of priority for an EP ‘application’ (EP1) if filed within 12 months of a previous application (P) provided they are in respect of the 'same invention'.

    The Paris Convention provides that all ‘elements’ of the latter ‘application’ (EP1) do not need to be in the priority application (P) provided there is 'unity of invention'.

    The 'same invention' of EPC A.87 should, therefore, be interpreted as having ‘unity of invention'.

    Provided EP1 has ‘unity of invention’ with P, then the applicant “shall enjoy… a right of priority”. If the cited T decision is correct, or the conclusions of Hbbshaw are correct, then there is nothing to be enjoyed. As a minimum level of enjoyment, priority application P should not be prior art in respect of EP1.

    EPC A.88(3) provides that the priority right "shall cover only those elements of the European patent ‘application’ which are included in" the priority application (P). If this is applied to cause the priority application to be citable as prior art under Art. 54(3) EPC then there is a lack of conformity with the Paris Convention.

    54(3) refers to EP applications having an earlier filing date. Provided ‘EP applications’ is interpreted as applying to EP applications other than the priority application, the issue is resolved.

    2. Another approach is to consider simply the following:
    (a) EP1 is not entitled to priority P, because the subject matter of EP1 is not disclosed in P, therefore P is 54(3) art.
    (b) The claims of EP1 are novel over P because the subject matter of EP1 is not disclosed in P.

    This works if there is no overlap such as when P discloses a species that is encompassed by a genus claim of EP1. Case law says ‘copper’ anticipates ‘metal’. Maybe, to the extent the genus claim covers the species, the priority claim is valid?

  4. Basically you ca't claim anything in the divisional that wasn't in the parent because of Art 76(1) EPC. Hence that means that anything in the divisional is entitled to the priority date of the priority application only in so far as it was present in the parent application also having the sam priority date. This means that a parent and divisional should normally be equivalent in terms of effective priority dates/filing dates and should not interfere with one another as conflicting European filings. I have not read the decision though so it is possible that some anomalous and unforessen situations could occur (as is often the case even with what seem to be the most simple and innocuous provisions of patent law.

  5. The EPO isn't bound by the Paris Convention.

  6. "This could happen, for example, if the first application disclosed and claimed only specific examples, while the second application claimed an invention more generally."

    Not according to T 665/00 and T 441/93

  7. "his firm answer was no for the reason that there had to be two applications for there to be a conflict"

    Can this be right? Doesn't G4/98 say that the divisional is a new application and parent and div are independent?

  8. What does Tufty think of the following situation:

    Priority application P discloses and claims A;

    PCT1 claims priority from P and discloses and claims both A and AA (AA is broader than A, but encompasses A) and also B (which is not related to A but is included in the PCT to save costs for the applicant);

    P is abandoned and not published;

    PCT1 enters the EP phase as EP1;

    In order to get protection for B in Europe, a divisional, EP2, is filed, with the same text as EP1, but claims to B only. The divisional is published shortly afterwards.


    A reason to say YES:
    Both EP1 and EP2 disclose A, which is entitled to the priority date of P. However, claims to AA, which is broader than A, are not entitiled to the priority date of P (not the same invention). Therefore, any claims to AA in EP1 are anticipated under 54(3) by the disclosure of A in EP2 and any claims to AA in EP2 are anticipated under 54(3) by the disclosure of A in EP1. There is therefore now no way for either EP1 or EP2 to validly claim AA and protection is lost.

    The reasons to say NO: 54(3) refers to an application having a filing date earlier than the application in question. The filing date is only the priority date if the priority claim is valid, which requires the application to be for the same invention. EP2 only claims B, so the priority claim for EP2 is invalid so it is not 54(3) against EP1.

    I believe that the "whole contents approach" to 54(3) requires the YES reasoning to be followed, but I'm not an expert in this area. If it does, the situation is not good in this case. The mistake was made at the time B was included in PCT1, since from that point on it was impossible to protect both B and AA without filing a divisional and any divisional filing necessarily prevents protection being obtained for AA. In attempting to save costs at the PCT stage, protection for both inventions was irrecoverably lost. Maybe that is a fair result and you should have to file an application for each invention. I don't know. But, as rhetorical questions, would you have realised when filing PCT1 that it was impossible to obtain protection for both B and AA in Europe? Would you have realised, when filing the divisional, that protection for AA was being lost?

    I don't know how the Paris Convention argument applies in this situation. Is there unity of invention between A and AA? If so, maybe the argument that the EPC must be interpreted as complying with the Paris Convention comes to the rescue. If not, then I think it can't help.

    Perhaps protection could be obtained by filing another divisional, EP3. EP1 could claim A, EP2 could claim B and EP3 could claim AA and disclaim A. I think this could work, but it depends whether A can be disclaimed in a sufficiently clear way. It now also requires you to realise before the two year divisional deadline is up, otherwise EP3 cannot be filed.

    If the YES argument is correct, and disclaimers are considered not suitable, then the practical result is that if you broaden the claims at the end of the priorty year, you can never file a divisional if you want protection for those broader claims.

    I don't think I've come across any cases like this in real life, but making changes at the end of the priority year is not unheard of, and combining multiple inventions in a PCT application to save costs is also not unheard of, so the situation above is not, I think, too far fetched.

    I'd be interested in what others think.

  9. I don't think the 76(1) points addresses and solves the legal issue. Unless my reasoning above (anonymous) is incorrect, there is a real likelihood that an EP application can be cited as prior art against a later application whose priority claim has been found invalid. This issue could result in a divisional application being considered 54(3) art to its parent because the divisional is entitled to priority when the parent is not so entitled.

    I don't see the legal basis for Prof Vollrath's argument, so that does not provide a solution ( I am puzzled by the use in opposition proceedings of an expert witness statement by a patent expert). The use of disclaimers, in my view, though legitimate, should be an unnecessary means to deal with the problem.

  10. The EPO are not bound by much in the way of internation conventions, but all members are bound by the Paris Convention, and A.87 EPC appears to be attempting to apply the PC.

    In the example of A, AA and B: Appn EP2 claiming B is not entitled to priority because it is not the same invention disclosed in priority appn P, either using the approach at issue, or my unity of invention argument under the PC.
    EP2 is not therefore 54(3) art. So, the NO argument is correct for this application. There is no issue created by including non-unified inventions in the PCT.

    If we take the case law and hlbb's arguments as correct, then I'm not sure that it matters that inventions A and AA are in separate applications (this needs a bit more consideration). If A and AA are claimed in the same application, then the priority application could be 54(3) art for one invention but not the other. Taken to this extreme, the potential to have multiple priorities under the EPC or PC would be worthless.

    Regarding unity of A and AA: AA is broader than A, but encompasses A, so a good case for unity. Debatable whether other art should be taken into account to determine unity, which may result in the need to divide, but not necessarily to cause a loss of priority.

  11. I'm liking T 665/00 and T 441/93. My reading of them is that they basically say that, in the case described by anonymous above, the claims to AA are to be considered as if they are split into two alternatives: one in which AA is A (entitled to priority) and one in which AA is not A (not anticipated). Thus the claims are valid.

  12. In general:

    - Everything in the divisional must be directly and unambiguously derivable from the parent application, lest it violates Art. 76(1) EPC, second sentence.

    - From the preceding, the divisional must either enjoy exactly the same priority right as the parent, or be refused on the account of the added subject-matter.

    - A divisional application will in any case enjoy the same filing date as its parent, so that one cannot be cited against the other under Art. 54(3) EPC.

    - Art. 76(1) EPC concludes by stipulating that the divisional application shall be deemed to have been filed on the date of filing of the earlier application and shall enjoy any right of priority. I think that this explicit statement reinforces the preceding, and would complicate any attempt to play one sibling against another.

    So much for the general case.

    Undisclosed disclaimers don't really fit neatly in the above system, but I hold nevertheless the case constructed by the commentators to be rather contrived, and would be inclined follow Dr. Vollrath's analysis.

    In a worst-case scenario (which I don't consider plausible), should a divisional be citable againsst its patented parent, the latter could possibly be amended in the same fashion as the divisional in limitation proceedings.

    Another part of the discussion concerned presumably an EP application claiming the priority of another EP application, which is a distinct case, which I hold for similar reasons to be somewhat frivolous.

  13. The date of filing referred to in Art 76(1) relates to the procedural filing date of Art 80:
    "The date of filing of a European patent application shall be the date on which the requirements laid down in the Implementing Regulations are fulfilled."

    The date of filing based on a right to priority (A.89) is only in respect of Art 54 and 60.

    As 76(1) states, "the earlier application shall enjoy any right of priority". The 'any' right would be in accordance with A.87 and A.88 requirements. 76(1) does not say the divisional is entitled to all valid priorities of the parent.

  14. Many thanks for everyone's comments. I am unfortunately still no closer to an answer. Maybe this means that this is an issue that will come up at some point before a board of appeal. Or maybe we have all missed something obvious. We shall see.

  15. This is all very interesting. The basic argument in the HLBBshaw article seems to be correct.

    One anonymous states:
    "A divisional application will in any case enjoy the same filing date as its parent, so that one cannot be cited against the other under Art. 54(3) EPC."
    The point is that in a European patent application claiming priority, some subject-matter in the application may enjoy the filing date of the priority document, while other subject-matter in the same application may only enjoy the actual filing date of the application.

    Therefore, in a strict interpretation of Art. 54(3) EPC, subject-matter in an EP application that enjoys priority may be cited against subject-matter in the same EP application that does not enjoy priority (or only a later priority date).

    It could indeed be argued that it makes no sense that an EP application may be cited against itself, but it is not at all clear how Art. 54(3) would forbid this.

    If it is the case that an EP application may not be cited against itself, it seems hard to argue that a divisional could not be cited against its parent or vice versa, given the fact that these are separate applications.

    What also happens not that infrequently is that applicants file multiple applications claiming the same priority. Certainly those applications can be cited against each other.

    Regarding the Paris Convention arguments, it seems to me that Art. 4F PC only states that, under certain conditions, it is OK for an application to contain more than what is contained in its priority documents. Such an application may not be refused for "extending beyond the content of the priority documents" in analogy to Art. 76(1). The EPC clearly complies with this requiremnt. The EPC correctly implements Art. 4F and even goes further in that it does not pose the unity of invention requirement that Art. 4F poses. Decision G 3/93 seems to confirm this, stating that Art. 4F PC corresponds to Art. 88(2) and (3) EPC.

    "If the cited T decision is correct, or the conclusions of Hbbshaw are correct, then there is nothing to be enjoyed. As a minimum level of enjoyment, priority application P should not be prior art in respect of EP1."
    This overlooks that a claim only enjoys priority if priority is valid for that claim. The cited T decision and HLBBshaw do not diminish in any way the enjoyment of priority of a claim with valid priority.

    If an application claims priority but the priority is not valid for a particular claim, that particular claim is not entitled to any enjoyment, see e.g. decision G 3/93.

  16. "I'm liking T 665/00 and T 441/93. My reading of them is that they basically say that, in the case described by anonymous above, the claims to AA are to be considered as if they are split into two alternatives: one in which AA is A (entitled to priority) and one in which AA is not A (not anticipated). Thus the claims are valid."

    Very good point, although I don't fully agree with it. If a claim is formulated as "metal", in my view this cannot be read as "copper" OR "metal but not copper", and a claim that is not an OR-claim either validly claims priority or not, nothing in between.

    However, in case of an Art. 54(3) problem as discussed here, it always seems possible to amend "metal" into "copper" OR "metal but not copper" (where the alternative "metal but not copper" is allowable based either on G 1/03 or on G 2/10, depending on the outcome of G 2/10). Such an amendment does not extend protection, so also complies with Art. 123(3) when necessary.

    So it seems the problem can always be fixed, at most at the cost of making the claims less readable. Since nobody benefits from less clear claims, it seems better to ignore the problem of self-conflicting applications, e.g. by suitably interpreting Art. 54(3).

  17. As Article 4F of the Paris Convention permits an application to contain elements having different priorities, it cannot be allowable under the PC to cite an earlier priority against a later one. To do so where the subject matter having the later priority is broader than, and encompasses the subject matter having an earlier priority, would inevitably result in a lack of novelty.

    Article 4G (right to divide and preserve rights to filing date and priority) extends this provision to divisional applications, the subject matter of which cannot be treated differently depending on whether it is contained in the original parent or any divisional.

    It is clear from the decisions of the Enlarged Board of Appeal (G3/3 and G2/98) that the EPC is not intended to contravene the PC. It is unfortunate that the wording of Article 88(2)(3) doesn’t clearly represent this clear provision of the PC, but that does not mean the EPC can be interpreted to the detriment of applicants, either as proposed, or as applied by T 680/08. It simply means that the Enlarged Board of Appeal is going to have to find some creative arguments to restore normality.

  18. @TMS:
    "As Article 4F of the Paris Convention permits an application to contain elements having different priorities"

    It indeed does, but in the sense that containing elements having different priorities is in itself not a ground for refusal, nor a reason to deny priority. As we all know, under the EPC an application containing elements having different priorities is indeed not a ground for refusal. Furthermore, Art. 88(2) and (3) EPC explicitly allow multiple priorities. So Art. 4F PC is complied with.

    That lack of novelty is a ground for refusal under the EPC is a different matter.

    Note that Art. 4F PC is only of a formal nature and does not say anything about what it means for a claim to enjoy priority in terms of prior art that can be taken into account. This is only defined in Art. 4B PC. Clearly, Art. 4B PC is not applicable to a claim that does not validly claim priority.

    Anyway, all of this is academic given the fact that a reformulation into an OR-claim which cancels the 54(3)-threat is always possible thanks to G 1/03.

  19. Myshkin: I've certainy been swayed by your arguments on 4F PC, but on further reflection I've felt they are missing something. I think the labelling of 4F as being "only of a formal nature" is the root of the problem. The effects of an interpretation must be taken into account, not so as to construe the term to support my own position, but to determine whether the effects are really what was intended.

    Take the example where 'copper' is entitled to the earlier priority, and 'metal' the later priority. Formally, each element is entitled to its priority, and the priority or application cannot be refused due to 4F. The EPC is also in conformity with this formal position. However, by application of novelty provisions under 54(3) this priority claim is, in effect, worthless because of self-collision.

    So by virtue of A.88, the EPC is in conformity with the EPC, but, by application of 54(3) it is not.

    I don't think the 'get out of jail free' card of the disclaimer decisions of the Enlarged Board make this an academic discussion. The copper/metal claims could be drafted as "copper" OR "metal minus copper", but that creates an obligation on the applicant to deal with the problem of the EPC. It is up to the EPO to deal with any problem of lack of conformity.

    There is also a potential issue with such N OR N-1 claims. In the national courts, the scope of the two claims will be dealt with independently and not as the initially filed all-encompassing scope, N. In theory there should be no difference, but in practice the edges of the determined claim scope can be grey. The metal/copper example may appear straighforward but I'm sure there will be cases which aren't.

  20. @TMS:
    I agree the issue is not entirely academic. Let me put it this way. Since G 1/03 implies that, at least in principle, problems of self-collision should be solvable under the EPC without changing the scope of protection by rewriting the claim, there is not really any point in actually forcing the applicant to undertake such a rewriting. This could be achieved either by interpreting Art. 54(3) in the way suggested by prof. Vollrath (but for somewhat different reasons), or by introducing a rule of interpretation for this specific case (so that "metal" is read as ("copper" OR "metal but not copper") if copper is specifically disclosed in the application and is disclosed by 54(3)-prior art with respect to "metal"). The latter solution would also work in the case of collision between separate applications claiming the same priority.

    It might not be correct to say that Art. 4F PC is "only of a formal nature" (see e.g. G 2/98, reasons 5 and 6), but I maintain that Art. 4F PC only defines conditions that must be satisfied for a claim to "enjoy priority". If a claim does not enjoy priority, the Paris Convention plays no role for that claim. If a claim does enjoy priority, it is Art. 4B PC that defines the legal implications.

    Therefore I still don't see how strict application of Art. 54(3) with novelty-destroying self-collision as a result would violate the Paris Convention. In your copper/metal example, the element "metal" is not entitled to priority, so is not protected by the PC against the fictitional earlier publication of "copper".

    I see more in the argument that strict application of Art. 54(3) goes against the intention of the drafters of the EPC (as prof. Vollrath argues). In a sense the EBA has already confirmed this in an indirect way in G 1/03 by allowing a workaround, see in particular point 2.1.3.