Tuesday 28 May 2013

Faster patents from the UK IPO but not the EPO

Last month the UK IPO announced a consultation on a new "superfast service" for processing patent applications, proposing that a patent could be granted as quickly as 90 days from filing if the applicant paid a fee in the region of £3.5 to £4k. Apart from the new fee, the only real differences over existing ways of accelerating applications (for example by using the Green Channel) are that: i) no reason would be required for acceleration; and ii) the usual 3 month period for third party observations after publication would be shortened to 1 month. As far as the UK goes, these proposals are not particularly ground-breaking, and the only objection I would have is that the high fee will probably put most applicants off, resulting in very little use of the service. There may, however, some cases where applicants really do need to get a patent granted quickly and cannot afford to wait for the application process to take its usual course.

If the UK IPO is happy to grant applications quickly, then why not the EPO? After all, the end result as far as protection in the UK is concerned is (or should be) the same. This is where one of the differences between the UK Patents Act 1977 and the European Patent Convention comes into play, and it comes down to that pesky Article 54(3) EPC again (corresponding to Section 2(3) in the UK Act).

If an application is searched and examined earlier than 18 months from its filing date, there is a possibility that some prior art might be missed, because Article 54(3) / Section 2(3) prior art will only make itself fully known after this date. Under UK law, this does not need to hold up grant because any missing prior art  can be searched for by the examiner doing a 'top up' search after grant. If anything relevant does come up, the examiner can offer the proprietor the opportunity to comment and amend as required, under Section 73(1) (although the downside is that by that stage the only amendments allowed are narrowing ones). The EPC, however, has no corresponding provision because, once a patent has been granted, it is no longer the responsibility of the EPO, except if an opposition is filed or in the limited circumstances of a request by the proprietor for limitation or revocation. Therefore, even though Article 93(2) suggests that grant might occur earlier than 18 months from the date of filing this does not in practice happen. I would, incidentally, be very interested to be pointed towards anything that would disagree with this.

This difference in the ability to speed up prosecution has been confirmed by T 1849/12 (in German only; see K's Law here for an English summary and discussion), in which the EPO board of appeal agreed with the examining division's decision to refuse the applicant's request to have their application granted earlier than the 18 month publication date. Their reason was that the examining division was required to come to a decision on grant based on all the requirements of the EPC, i.e. including Article 54(3). Only when the ED was of the opinion that all requirements were fulfilled could the application proceed to grant.

The conclusion seems to be that, at least as far as choosing between getting a patent from the UK IPO and EPO goes, you can either have slow and sure or fast and loose. Which would you prefer?

Thursday 23 May 2013

Imaginary claims and conflicting divisionals

After my last post about the "poisonous divisionals" hypothesis, I have been thinking about the issue a bit more, helped by some very useful comments on the post, as well as on other articles about the issue. I now have what I think is an answer that may make the problem go away.

For anyone who is not yet aware (and for those who are, simply skip to the next paragraph), the issue relates to a European patent application having a claim that is broader than anything in the priority application becoming invalid through lack of novelty once a divisional application is filed and published, because the divisional application becomes prior art under Article 54(3) EPC as a result of the claim not being entitled to priority. This strange result comes from a literal interpretation of the wording of Article 54(3), which makes no distinction between applications that may be related to the one in question and other applications (or indeed, as might be argued, the application itself).

My solution to the problem relates not to some unwritten rule that divisionals and priority documents should not be considered to be prior art (which some would argue), but to Article 88(2) EPC, which states:
"(2) Multiple priorities may be claimed in respect of a European patent application, notwithstanding the fact that they originated in different countries. Where appropriate, multiple priorities may be claimed for any one claim. Where multiple priorities are claimed, time limits which run from the date of priority shall run from the earliest date of priority".
The simplest way of thinking about a claim having more than one priority would be where the claim contains alternatives, in which case it can be easily divided into two or more separate claims. Some alternatives might have a valid claim to priority, while others might not. 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.

No distinction in Article 88(2) is made regarding the form the claim takes. More complicated forms of claims can therefore also have multiple claims to priority, although separating them out may be more tricky. 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.

Some of the discussions about how to tackle the conflicting divisionals problem focus on what kinds of disclaimers might be used to get around the problem in this kind of way. In my view this misses the point, although the idea does get part of the way there. 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. This is because the collective scope of the resulting two imaginary claims would be exactly the same as the original claim, and Article 88(2) EPC indicates that there is no need to actually rewrite the claim to be two separate claims. There is therefore no need to find the right form of wording to satisfy added matter requirements because no amendment is needed.

I see a nice parallel here with mathematics, where imaginary numbers are of great use in solving real problems, for example in finding the roots of a cubic function or in modelling electrical circuits in response to time-varying signals. Just because there is no real solution to the square root of -1 does not mean that an imaginary solution (usually termed i) cannot be a useful way of looking at a particular problem where this might arise. In the same way with problematic claims, just because there may not be a way of rewriting the claim as two parts, each of which would be valid for different reasons, does not mean that considering such imaginary claims cannot be a useful way of solving the problem of conflicting divisionals.

As usual I may, of course, be wrong. Any thoughts on the issue would be welcome.

Update 25 May: A commenter has pointed me to T 1222/11, which seems to support the idea. See point 11.5.5 in particular.

Update 15 June: There is an interesting discussion on the IPKat here on the related issue in the Nestec v Dualit case.

Update 31 November 2016 / 7 February 2017: I have been proved right! See my posts on the outcome of G 1/15 here and here.

Wednesday 8 May 2013

"Poisonous divisionals" hypothesis confirmed

A couple of years ago I wrote a post on the question of whether a divisional application could effectively poison its own parent if the priority document became Article 54(3) prior art as a result of a claim to priority being invalid. At the time I thought it was a bit far-fetched, although I could not see any actual reason for the hypothesis to be wrong.

Prompted by a recent decision in the Patents Court (Nestec v Dualit - see paragraph 111, and the IPKat here for more details) in which claims of a European patent were found to lack novelty over its own priority document, I have now been pointed towards a recent decision by the EPO, T 1496/11. In this, the similar but potentially more dangerous "poisonous divisionals" (now a registered trade mark - see below) hypothesis appears to have been put to the test and found to work in practice.

The Board of Appeal found that claim 1 of patent EP0930979, as maintained by the opposition division, did not have a valid claim to priority because it had been generalised to encompass more options than were disclosed in the priority document. As a result, a divisional application became relevant for novelty under Article 54(3), and the claim was found to be anticipated. In this case the problem could be (and was) easily fixed by narrowing claim 1 to again have a valid claim to priority. I expect a fix similar to this would be possible in most cases, although it would probably result in a less satisfactory scope than the patentee was hoping to get. The decision does, however, confirm that the potential prior art effect of divisional applications should be carefully considered and not just dismissed as a theoretical possibility. More importantly, it shows that great care should be taken when filing an application from which priority will be claimed, particularly when the priority filing is narrow in its disclosure and needs to be generalised in a later filing. In some cases it might even be worth abandoning a priority filing and re-setting the clock to avoid such a problem.

Update 8 May 2013: See also the news article here from Hoffmann Eitle, K's Law here, and a (typically wordy) article from Avidity here.

Update 9 May 2013: In what seems to me to be a rather strange move, Avidity IP Limited have registered the terms 'poisonous divisional' and 'poisonous divisionals' as a series of trade marks at the UK IPO under class 45 for various intellectual property and other services. Whether they will seek to (or be able to) enforce the marks in relation to the terms being used in a blog post or otherwise is, however, unclear.

Update 16 May 2013: The generally excellent IPCopy blog from Keltie has picked up on the issue here, and added some interesting points about the relevance of Nestec v Dualit., as well as proposing an alternative to the 'poisonous divisionals' trade mark.

Update 12 June 2013: See the follow up post on my solution to the problem here.