Thursday 18 July 2013

Partial priority - a referral to the Enlarged Board?

Following my earlier post here about the (in my view) flawed judgment of Arnold J in the Nestec v Dualit coffee machine case, there have been further interesting developments on the corresponding European patent EP2103236 (register: 09007962.5). The matter is currently waiting to be heard before the EPO Board of Appeal in case T 1674/12, after a decision by the opposition division upholding the patent in amended form was appealed by the opponents. The points to be considered are similar to those that were considered in the Patents Court, and there is certainly now a large amount of overlap between the cases. Oral proceedings in the European case are scheduled for 9 October 2013 which, if the information here is correct (confirmation here; thanks to Joe) will happen before the UK Court of Appeal gets to hear the arguments on the appeal from Arnold J's judgment.

Each side in the European case have now submitted their arguments, the latest being those from Nestec, provided on 15 July 2013 countering those of the opponents. In brief, as for the EP(UK) case, the arguments primarily concern whether the claims of the patent are entitled to priority, and whether they are valid over an alleged prior public use. The main point, at least as far as I am concerned, is that concerning priority, as regular readers of this blog will already know.

The main issue over priority is whether a broader definition of a feature in the patent claims is entitled to priority and, if not, whether this would make the claim anticipated by the published priority application. The feature relates to whether a housing for receiving a capsule is located in a first or second part of the device. The application claimed the housing without stating where it was located, disclosing that it could be in either or both, whereas the priority application only disclosed that the housing was in the second part. The question is then whether the claim is entitled to partial priority for embodiments where the housing is in the second part, or if the claim is not entitled to priority at all. Arguments have been provided by the opponents for the latter case (of course), whereas Nestec have argued that the claim would be entitled to partial priority. Interestingly, both arguments derive from different interpretations of G 2/98, leaving open the distinct possibility of a further referral to the Enlarged Board.

G 2/98, which has been raised many times in the various discussions relating to the Nestec case and the more general poisonous priority/divisionals issue, considered the question of whether a claim could be entitled to more than one priority date. The board referred to a memorandum that led to the introduction of Article 88 EPC, which explicitly allows a single claim to have more than one priority. The relevant parts of G 2/98, which are worth repeating in full to avoid any confusion, are points 6.5 to 6.7:
6.5 According to the memorandum, in evaluating whether there is any justification for claiming multiple priorities for one and the same claim of an application, a distinction has to be made between the following situations: (i) "AND"-claim (ii) "OR"-claim
6.6 As regards the "AND"-claim (point 6.5(i) supra), it is held in the memorandum that where a first priority document discloses a feature A, and a second priority document discloses a feature B for use together with feature A, "then a claim directed to A+B cannot enjoy a partial priority from the first priority date, because the invention A+B was disclosed only at the date of the second priority document". From this it clearly follows that, according to the legislator, multiple priorities cannot be claimed for an "AND"-claim. Hence, the application of the so-called "umbrella"-theory (according to which the feature A in the claim directed to A+B would enjoy a partial priority from the first priority date, with the result that the feature A could under no circumstances become state of the art in relation to the claimed invention A+B) is to be disregarded. Besides, the application of the "umbrella"-theory would manifestly be at variance with Article 88(4) EPC.
6.7 As regards the "OR"-claim (point 6.5(ii) supra), it is held in the memorandum that where a first priority document discloses a feature A, and a second priority document discloses a feature B for use as an alternative to feature A, then a claim directed to A or B can enjoy the first priority for part A of the claim and the second priority for part B of the claim. It is further suggested that these two priorities may also be claimed for a claim directed to C, if the feature C, either in the form of a generic term or formula, or otherwise, encompasses feature A as well as feature B. The use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2), second sentence, EPC is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters.
The argument in this case is all about point 6.7, in particular whether a broader claim can be considered to be of the "OR" type if it encompasses a narrower priority disclosure. On the face of it, it seems obvious that it would, given that the examples in the memorandum include broadening ranges and applications. There have, however, been decisions by the EPO Boards of Appeal that have taken opposing views on what is meant by "a limited number of clearly defined alternative subject-matters".

T 1877/08, which was cited by the opponents, says that a broader claimed range cannot be given priority to a narrower range, even partially, because G 2/98 requires "separable alternative embodiments" (point 2.4).

T 1222/11, cited by Nestec, says that a broader generic formula can have partial priority because the clearly defined alternatives are the narrow formula and the rest of the scope of the claim (point 11.5.5).

Nestec have therefore argued that, based on T 1222/11, the claim is entitled to partial priority for the housing being in the second part, whereas the opponents argue, based on T 1877/08, that the claim is not entitled to priority at all.

In my view, the interpretation based on T 1222/11 is clearly the right one, not least because the memorandum referred to in G 2/98 includes examples of this type as ones where partial priority would apply. It would also avoid the (also in my view) absurd outcome that the patent would be found to lack novelty over its own priority document. The EPO board in this case will clearly have to decide one way or the other and they are led in two opposing directions by previous T decisions. I therefore see a referral to the Enlarged Board being a distinct possibility, unless the Board consider T 1877/08 (or T 1222/11 of course, as pointed out by the first commenter below) to be a 'rogue' decision that should be ignored. The question to be referred might be of the following form (thanks to the commenter "Joe", who seems to have already thought of it):
Can a generic term in a claim, encompassing species having multiple priority dates, be regarded as defining clearly defined alternative subject-matters (as defined in G2/98) so as to be compliant with Art. 88(2), second sentence?
Would this resolve the issue? I hope so.