Thursday, 13 August 2015

Partial Priority - Questions for the Enlarged Board

Back in January I wrote about an appeal case at the EPO where a referral to the Enlarged Board on the question of partial priorities was going to be made. The Board in T 557/13 has now finally issued their decision, which is available here. Although it has taken them over six months to get there, I can see why it has taken so long, since the decision runs to 64 pages and is very comprehensive (as you might expect for such an important case).

In brief, European patent EP0921183 (which, by the way, expired in June this year) was opposed for lack of novelty, among other things. The opposition division concluded that claim 1 as granted was a generalisation of a more specific disclosure in the priority document, which had also published as an EP application. The priority document therefore became prior art under Article 54(3) EPC. Since, in the opposition division's view, the granted claim did not give rise to the claiming of a limited number of clearly defined alternative subject matters (referring to G 2/98), the claim was not entitled to priority and lacked novelty over the priority document.

On appeal, the patent proprietor argued that the claim was novel because a divisional application could not have a different priority date from its parent, backing its arguments up with various documents, which included a post from this blog (mentioned as D22 in the decision). The proprietor also cited the FICPI memorandum that was referred to in G 2/98, and proposed various questions to be referred to the Enlarged Board (which were mentioned in my previous post). The Board indicated that the issue of novelty might hinge on whether a patent could validly claim a right of priority when claiming more generically than a priority disclosure, and drew the parties attention to decision T 571/10, which is quite clear on the subject.

Following oral proceedings, which were held on 17 December 2014, the Board decided that it would refer questions to the Enlarged Board, the form of which were to be decided. This decision now sets out the reasoning behind the questions being referred. As the Board states at point 8.4 of the reasons, "the decision on novelty of the subject-matter of Claim 1 may depend on what approach is adopted in assessing entitlement to partial priority for a generic "OR"-claim. The concrete question to be resolved here is whether Claim 1 enjoys partial priority to the extent that the use of the product of Example 1 as disclosed in D16 is encompassed by the more generic definition of Claim 1, rather than being spelt out in it". In my view, this is the core of the issue, and one that has been much debated here and elsewhere. The question is in effect one of whether it is correct to take a broad or narrow view of the "limited number of clearly defined alternative subject-matters" as defined by G 2/98.

The Board goes into a lot of detail discussing the background to the issue of claiming partial priorities. They refer to the FICPI memorandum, and note that it was "an essential element in the process of drafting the EPC provision allowing the claiming of multiple priorities for one and the same claim which was finally adopted" (point 11.7). This seems to disagree with comments from some who have accused me of putting too much emphasis on the memorandum. In my view the memorandum is key, and has to play a very important role in resolving the issue if G 2/98 is to be followed at all (which, of course, it might not be). The Board also discuss the conflicting case law of the EPO, as well as two relevant judgments from the England and Wales High Court (Nestec v Dualit and HTC v Gemalto) where partial priority made an appearance. All of the issues should already be familiar to readers of this blog, so I won't go into the details again.

In a preamble to the actual questions themselves, the Board outline the main issues and comment on the fundamental importance of the point of law. At point 17.2.2 the Board states:
"The right of priority being one of the cornerstones of the patenting system, the Board considers that clarification of issues arising in the present connection is of fundamental importance. As argued by the appellant, the way in which entitlement to priority is assessed in cases of generic "OR"-claims is of great practical importance for claim drafting and filing strategies. "
The Board refers to another pending appeal case, T 624/14 concerning EP2157457, where a request for a referral has also been made. They also draw attention to two further publications, one of which is an article I wrote (in my real life persona) with Renaud Fulconis for the CIPA journal in December 2013 (cited as D30 and available in preprint form here), setting out the two opposing views on partial priorities. The Board mention that the jurisprudence before and after G 2/98 has not been applied uniformly in the assessment of partial priority for generic "OR"-claims, resulting in two divergent approaches developing. Clarification from the Enlarged Board is therefore needed. Given the fundamental nature of the issue, the questions have been formulated in broader terms than those suggested by the parties, and are as follows:
1. Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic "OR"-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document? 
2. If the answer is yes, subject to certain conditions, is the proviso "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" in point 6.7 of G 2/98 to be taken as the legal test for assessing entitlement to partial priority for a generic "OR"-claim? 
3. If the answer to question 2 is yes, how are the criteria "limited number" and "clearly defined alternative subject- matters" to be interpreted and applied? 
4. If the answer to question 2 is no, how is entitlement to partial priority to be assessed for a generic "OR"-claim? 
5. If an affirmative answer is given to question 1, may subject-matter disclosed in a parent or divisional application of a European patent application be cited as state of the art under Article 54(3) EPC against subject-matter disclosed in the priority document and encompassed as an alternative in a generic "OR"-claim of the said European patent application or of the patent granted thereon?
The questions posed look very comprehensive to me, and very thoroughly thought out. I suspect the answer to them is not going to be a straightforward "no" to question 1, as that would be too easy (although would seem to me to be the correct one; see here for my reasons why). The key part is likely to be question 3, which is where the FICPI memorandum will come into play, unless the Enlarged Board decides to throw out that part of G 2/98 and start afresh (which they can do).

What happens next is the interesting part. I suspect the EPO will invite observations on the questions being referred, and then in a year or two we should get the answer. Let's hope it's the right one.

See further analysis from PatLit here and the IPKat here.

UPDATE 3 November 2015: As announced on the EPO's website here, third parties are now given an opportunity to comment on the referral by filing written statements. The deadline for filing is 1 March 2016.

UPDATE 16 December 2016: The answer to question 1 is NO. See here.


  1. I quite like the idea of a "No" to question 1. I am not sure if it is my imagination, but the first question seems like it may have been written in a way that invites (or at least leaves a friendly door open to) a simple answer of "No". Such a simple answer would be rather ironic (and pleasing), given the amount of verbiage this subject has generated.

  2. What does Tufty think of the following example.

    P1 discloses copper.
    European application, filed one day later, discloses and claims metal.

    D1 is an EP (say by another applicant) filed before P1 and published after the application. It discloses metal. It does not mention copper.

    D1 is prior art under Art. 54(3). One would expect it to take away novelty of the claim to metal. But does it when we are being generous with (notional) OR-claims?

    How about notionally splitting "metal" into "copper" OR "metals other than copper"? (Either because there is P1 disclosing copper, or simply because metal encompasses copper.)

    Clearly "copper" is new over D1.
    But "metals other than copper" is new over D1 ("metal") as well.
    Since both alternatives of the OR-claim are new, the claim to metal is new over the prior disclosure of metal in D1.

    Does that seem right?

    1. See Tim Jackson's comment here. The claim to metal is not new over D1, but the priority claim to copper is.

    2. How can metal not be new if both notional parts are new?

      That is the whole point of notional splitting: by splitting such that each notional part is new, the lack of novelty is overcome.

      Tim's comment does not address this example. No P2 here.

      Note that my example does not even need P1, provided one allows arbitrary "notional splitting" into a notional OR-claim and examines novelty and inventive step separately for each notional part. So this is not so much a problem of priorities as it is a problem of notional/generic OR-claims with parts that are not individually disclosed in the application. (The fix is clear: require the parts of an OR-claim to be individually disclosed. That prevents novelty and inventive step from being assessed on the basis of "notional" limitations having no basis in the application as filed.)

    3. The claim to metal is not new over D1, so splitting it up to assess novelty is not necessary (and makes no sense). Amendment would be required, so in that case there would be a need to have basis for separate parts being claimed.

    4. Why not necessary? I'm sure an appellant would like to have his claim new, whether D1 is a poisonous divisional or a regular 54(3) document.

      If D1 is a divisional disclosing copper with an earlier date than metal, then some argue that "metal" may be notionally split up in "copper" and "metal other than copper" to render the claim to metal new over copper.

      If D1 is a 54(3) document disclosing metal, then the same approach again renders the claim to metal new over D1.

      If the outcome makes no sense, maybe something is wrong with the approach?

      Maybe the notional splitting approach can be refined to avoid metal becoming new over metal, but what exactly are then the rules to be applied? I don't think a rule "it is not necessary and it makes no sense" is very helpful.

    5. If D1 is a 54(3) document disclosing metal, then a claim to metal is not new. Splitting the claim into notional parts does not help because the combined claim is the same as is disclosed in D1. This is different from the poisonous priority case, where the combined claim is different but its scope encompasses the priority document. This is why partial priorities have to be used. I have said before that the partial priority solution to poisonous priority can only be used when there is no intervening prior art (see my article in the CIPA Journal). The same would also apply where there is 54(3) prior art.