Saturday, 22 June 2013

Nestec v Dualit - a seriously flawed judgment?

A lot has been written about the recent case of Nestec v Dualit, which seems to have brought the idea of "poisonous priority" to UK patent law in a similar way to the "poisonous divisionals" idea in European patent law. The issue centres around whether an application that claims more broadly than its priority application discloses can be anticipated under Article 54(3) / Section 2(3) if the priority application itself publishes. This concept has been much discussed, and I have written about my own solution to the problem here.

What has not been discussed much, however, is whether the conclusion arrived at by Mr Justice Arnold in the case was actually correct. Having looked in more detail at the judgment, I have come to the conclusion that it is seriously flawed on the priority point.

Claim 1 of the patent, as sought to be amended (by the underlined parts) by Nestec, and as broken down into integers by Arnold J, reads:
[1A] Extraction system comprising a device for the extraction of a capsule and a capsule (16) that can be extracted in the device; 
[1B] the capsule (16) comprising a guide edge in the form of a flange, the device comprising
[1C] - a first fixed part (2),
[1D] - a second part (3) which is moveable relative to the first part, 
[1E] [-] comprising a housing (4) to receive the capsule and defining, in the closed position of the moveable part against the fixed part, a position for extracting the capsule on an axis (25) in said housing, 
[1F] - a part for insertion and positioning comprising guide means (6,7) for the capsule arranged so as to insert the capsule by gravity and position said capsule in an intermediate position; 
[1G] the guiding edge being received in the guide means (6,7); 
[1H] said guide means being insertion slides permitting the engagement of said flange; 
[1I] - a beverage-delivery system (19, 53), 
[1J] said second moveable part (3) being configured to displace the capsule (16) from the intermediate position to the extraction position when the device is closed, characterised in that 
[1K] the guide means (6, 7) comprise stop means (20) configured to retain the capsule (16) in an intermediate position, in a manner which is offset to the axis of the capsule in the extraction position
[1L] the flange bearing against said stop means in the intermediate position, and in that 
[1M] the second, moveable part (3) receives the capsule to displace it from the intermediate position to the extraction position on the axis (25) of the capsule in the extraction position in said housing (4) 
[1N] so that, when moved, the moveable part acts on the capsule to move it downwards, 
[1O] the flange of the capsule passing below the stop means (20), 
[1P] and to push it along the axis (25) of said moveable part into its extraction position.

The key part of the judgment relating to the priority question is in paragraphs 95 to 104. In this, Arnold J notes that claim 1 of the patent covers certain arrangements, outlined as: i) the housing receiving the capsule being contained in either the second part (integer 1D) or the fixed first part (integer 1C); and ii) the capsule being offset, inclined or both relative to the extraction axis. Arnold J's view was that, because the priority document did not disclose these different arrangements, which were only found in the later application, claim 1 lacked a valid claim to priority.

On the face of it, this seems to be plausible. However, as any first year trainee will know, there is a huge difference between what a patent claim covers and what it states. The claim in question makes no mention of the housing being in either of the parts [perhaps not: see update below], nor does it require the capsule to be anything other than being offset to the extraction axis. The possibilities of the different ways in which the housing and the capsule could be arranged were therefore only additional possibilities that were added in the later filing. In normal circumstances this would not affect any priority claim at all, as it is perfectly normal practice to add features that might provide further fall back positions in a later priority-claiming filing. Arnold J, however, seems to think otherwise. If correct, this would be extremely worrying as it would result in a substantial proportion of existing patent applications and patents lacking a valid priority claim merely because additional options were added in the later filing, even if claim 1 was left entirely unchanged. Am I missing something, or has Arnold J got it very very wrong?

Update 27 June 2013: To pre-empt any eagle-eyed readers, I have noticed that I may indeed have missed something, although it doesn't affect my conclusion. The addition of the word "comprising" to the start of integer 1E indicates that the housing is part of the second part, not the first part. This would only raise an issue of priority if this could not be unambiguously derived from the priority application, and it was agreed that this arrangement was in fact disclosed in the priority application (see paragraph 96). However, the other point relating to the capsule being possibly also inclined is, I think, still valid.


  1. Tufty I cannot see anything wrong with your reasoning, and await with interest to see what thoughts other readers can offer.

    People like to debate the "poisonous" issue with examples of number ranges and analogies involving pieces of pie. I think this case offers a better framework for debate, not least because opposition proceedings at the EPO often do get confused on the issue that if a claim covers something it must be disclosing that thing too. As we all know, it doesn't follow.

    Therefore, I hope this case can illuminate the issue brightly enough to prompt further debate.

    The "poisonous self-collision" issue is set to be increasingly aggravating. If you visit K's Law:

    you can see that the Opponent raised it, but late, which allowed to Board to shut it out as inadmissible. They won't be able to do that in future, when folks raise it within the 9 month opposition period. A fix is needed already, and will become ever more pressing.

  2. A patent attorney24 June 2013 at 09:29

    It looks like Nestec accepted that the claim could not be entitled to full priority (para 96). So, it's hardly fair to blame Arnold J for a 'seriously flawed' judgement, when he was not even asked to decide on that point.

    1. I think it's perfectly fair to blame him. He is supposed to know the law. I would, however, put some of the blame on Nestec as well for being incompetent.

  3. Looking at the April 2013 Judgement, I read that the Hearing took place in March 2012. Thirteen months, to write the Judgement? Can that be?

    1. Could it be a typo? March 2013 would seem to make more sense.

  4. In the EPO, the EPO practice and articles guarantee that
    a priority document itself will not be 54(3) prior art;
    a divisional is required.

    However, I'm extremely worried about this thing, when we have
    the Unitary patent. If the (national) priority application
    becomes an Art54(3) [or more precisely corresponding national
    law] novelty destroying right for the Unitary patent, this
    would mean that all Unitary patents, wherein the invention
    has been broadened from the priority document, wherein the
    priority document is a national application in a UP member
    state, would have to be revoked. This, in my opinion, is
    just absurd.

    1. In the EP procedure you do not need a divisional, but you do need another EP application. If the priority document is a published EP document (either direct or via PCT), then it is prior art under Art. 54(3).

      I remember a BoA-decision where the (EP-)priority document was in fact used against the EP application as Art. 54(3) prior art. The applicant argued that this puts applicants that file their priority application with the EPO at a disadvantage compared to other applicants, but the argument did not help him. I'll see if I can find back this decision.

      I have not yet looked very deeply into the Unitary patent. Are national rights going to be "UP rights"?

    2. I think you might mean T 680/08, commented on by me here.

  5. The word "comprising" was added in Nestec's proposed amendment to the claim, which was not considered until para. 143

    Even if the claim were amended in that way, Arnold did not think that it would save it.

    1. Which again, I think, supports my idea that Arnold J got it completely wrong about priority.

  6. Dear Tufty

    I am more of a dog person myself.

    Reading all the comments perhaps one should stand back and study the case as a whole.

    Do you really want Patent holders to be able to control the supply of the Market with their invention after their patent had expired?

    As indeed was the case in this hearing.

    Whilst the patent revocation was always a risk for the holder, there are two further points Nestec lost. Either of these would have lost them the case. As in fact they did.

    The result of this case is that the consumer now has a choice. As ever it is up to them to decide which product to buy rather than Lawyers...

    1. I don't have any allegiance for or against Nestec, and couldn't care less whether they have patent protection for their coffee pod products. Personally, I think they are awful, and I much prefer using real coffee to their pre-packaged stuff. This, however, has nothing to do with the issue I have here, which is all about a fundamental part of patent law, and something that judges should understand and get right. The fact that the Nestec patent would have failed for other reasons anyway is neither here nor there. I hope that this point gets resolved on appeal, even though I would expect the appeal on validity to be dismissed.