In total, 35 submissions have been filed (36 if you count this late filed submission), including those from the appellant and respondent, as well as the comments from the EPO President. The table below is a brief summary of each of them, indicating what answers each suggests the Enlarged Board should give to the five questions that have been raised, at least as far as I can figure it out. The link in each case will take you to a full copy of each brief.
Question 1
|
Question 2
|
Question 3
|
Question 4
|
Question 5
|
|
No
|
-
|
-
|
-
|
-
|
|
No
|
-
|
-
|
-
|
-
|
|
Yes
|
Yes
|
As stated
|
n/a
|
Unanswered
|
|
No
|
-
|
-
|
-
|
-
|
|
Alexander
Esslinger (Betten & Resch)
|
No
|
-
|
-
|
-
|
-
|
No
|
-
|
-
|
-
|
-
|
|
No
|
-
|
-
|
-
|
No
|
|
No
|
-
|
-
|
-
|
-
|
|
No
|
-
|
-
|
-
|
-
|
|
No
|
-
|
-
|
-
|
No
|
|
No
|
No
|
impossible to answer
|
partial priority must be respected
|
No
|
|
Unclear
|
-
|
-
|
G 2/98 in context of EB disclosure test
|
No
|
|
Yes
|
unclear
|
as stated
|
unclear
|
No
|
|
No
|
-
|
-
|
-
|
-
|
|
Yes
|
?
|
?
|
?
|
?
|
|
-
|
-
|
-
|
-
|
-
|
|
Yes
|
Yes
|
G 2/98
|
n/a
|
Yes (?)
|
|
No
|
-
|
-
|
-
|
-
|
|
Infineum
(applicant / proprietor)
|
No
|
-
|
-
|
-
|
-
|
No
|
-
|
-
|
-
|
-
|
|
No
|
-
|
-
|
-
|
-
|
|
No
|
-
|
-
|
-
|
-
|
|
Klaus
Mikulecky (Respondent)
|
Yes
|
Yes
|
As stated
|
n/a
|
Yes
|
No
|
-
|
-
|
-
|
No
|
|
?
|
|||||
No
|
-
|
-
|
-
|
No
|
|
?
|
?
|
?
|
?
|
?
|
|
No
|
-
|
-
|
-
|
-
|
|
No (with caveats)
|
-
|
-
|
-
|
-
|
|
No
|
-
|
-
|
-
|
-
|
|
No (?)
|
-
|
-
|
-
|
-
|
|
No (preferred)
|
Yes (if q1=no)
|
Based on T 571/10
|
n/a
|
No
|
|
-
|
-
|
-
|
-
|
No
|
|
No
|
-
|
-
|
-
|
-
|
|
-
|
-
|
-
|
-
|
No
|
Although the decision will clearly not be made on a vote, it is interesting to see that 24 of the briefs recommend that question 1 is answered with a 'no', with only 5 suggesting a 'yes'. The remaining briefs either do not address question 1 (Vossius and WSGR) or do not make it clear (at least to me) what the answer should be (Olena Butriy, EPO President and a couple of others).
Just to remind you, question 1 asks essentially whether a claim in a European patent application can be denied partial priority to subject matter in a priority document that is encompassed by the claim. As I have explained in previous posts, my view is that the answer should be a clear 'no', making the remaining questions redundant.
Although most of the briefs have also suggested a clear 'no' to question 1, there are some that have considered that there might be cases where the answer could be qualified with caveats or conditions. Pekka Heino, for example, suggests that partial priority should be refused if the subject matter of a claim only partially overlaps subject matter of the priority document (although this does seem to miss the point in question 1 of the claim encompassing the priority subject matter). Ericsson, who cautiously suggest a 'yes', or possibly a 'no' with caveats, also suggest that there could be exceptions, for example where the second filing proposes an alternative susceptible of replacing a feature disclosed in the first filing. Again, this seems to me to define a case where the claim would not encompass the priority subject matter, so might be dealt with that way. VNONCW, who prefer a 'no' to question 1, go further and hedge their bets by suggesting what the answers to the remaining questions should be in case the Enlarged Board answer with a 'yes'. Another one from epi also goes into how the Enlarged Board should answer questions 2 to 5 in the event the answer to question 1 is a 'yes'.
Out of all the contributions, my personal choices would be those from Bardehle Pagenberg and Delta Patents, both of which are comprehensive and very readable summaries of the situation. Some of the others are worth reading as well, particularly those where a contrary view is taken and/or where an answer is provided for one or more of the other questions. Both Vossius and WSGR do not deal with question 1 at all, for example, but concentrate on question 5, which is whether a parent or divisional application can be prior art under Article 54(3) against an application in the same family.
The comments from FICPI are, of course, also worth a look, since it was a memorandum from them that G 2/98 indicated "can be said to express the legislative intent behind Article 88(2), second sentence" (point 6.4), which this referral is all (or at least mostly) about. FICPI make the very obvious and clear point that any interpretation of G 2/98 that does not fit with the principles laid out in the memorandum and its three examples would be (or, as they cautiously state, appear to be) erroneous.
The EPO President's comments provide, as might be expected, an exhaustive analysis of the case law and background to the question of partial priority, citing the usual sources, and provide some guidance as to how the questions might be answered, in particular at paragraph 144:
"According to the Enlarged Board, subject-matter in general enjoys priority if it is derived from the priority document using the disclosure test. Subject-matter encompassed by a generic "OR"-claim enjoys priority if it is derived from the priority document using the disclosure test and if it is one of "a limited number of clearly defined alternatives". A generic "OR"-claim is explicitly recognised as being capable of enjoying partial priority for subject-matter that it encompasses "either in the form of a generic term or formula, or otherwise".194 It appears to be incompatible with this definition to require alternative subject-matters to be "spelled out as such". Hence, the strict approach seems to be at odds with the Enlarged Board's jurisprudence. At the same time, the "broad" approach may be too abstract in the light of the requirement for "the claiming of a limited number of clearly defined alternatives." Thus, especially in the technical fields of chemistry and biotechnology, the burden on the public to identify a high number of alternatives should be taken into account." (emphasis added)
This suggests that the answer to question 1 might be a qualified 'No', depending on whether the "limited number" test from G 2/98 should be taken into account. The President is clearer on question 5 though, and states at paragraph 146: "A proper assessment of partial priority entails a negative answer to question 5. Sound arguments based on the purpose and function of divisional applications in the patent system, and within the EPC, would likewise suggest a negative answer". How anything but a clear 'No' answer to question 1 could lead to a negative answer to question 5 is not clear to me, but at least the President (or, more accurately, whoever wrote the comments for him) is clear that the answer should be 'No' regardless of how it is arrived at.
I have not analysed each of the briefs in detail, so there will undoubtedly be some other interesting points I have not yet noticed. Any comments noting these, or making any other relevant point, would be gratefully received.
Note: This post has been updated extensively since it was originally posted on 3 March as further comments and briefs appeared on the register.
Note: This post has been updated extensively since it was originally posted on 3 March as further comments and briefs appeared on the register.
Two further amicus briefs to add to your list:
ReplyDeleteCIPA and epi
Both answer "no" to question 1.
Thanks Tim. I guess these too should be appearing on the register soon.
DeleteThank you for listing up.
ReplyDeleteThrough amicus briefs, I could read various important documents, such as “FICPI Memorandum” and “Actes de la Conférence de Washington de 1911” for the first time.
In G2/98, it is stipulated that “umbrella”-theory is to be disregarded according to the FICPI Memorandum. So I wanted to read the FICPI Memo. The Memo is attached to Pekka Heino.
The Memo says that if A+B is proved to belong to the state of the art between the two priority dates, the claim to A+B must be declared invalid. However the Memo never says that if A is proved to belong to the state of the art between the two priority dates, the claim to A+B must be declared invalid.
In T 301/87 (α-interferons/BIOGEN), which seems to be consistent with “umbrella” theory, it was stipulated that “if such publication goes beyond the content of a previously filed application and includes subject-matters not covered by the disclosure of that application, such disclosure may in principle be cited against any claim in the (final) European patent application relying on a priority date subsequent to the publication date”. This doctrine is also consistent with the explanation of the FICPI Memo.
To be continued.
Asian patent practitioner
“Actes de la Conférence de Washington de 1911” is attached to Stepan G. Fucks. I was surprised to recognise that the title of “ALINÉA 5 NOUVEA” was not “Priorités multiples” but “Brevets additionnels”.
ReplyDeleteMoreover, the word “brevets additionnels” can also be found in the actual proposition.
Namely, the fifth paragraph of the proposition is following as:
Lorsque, dans le pays où le premier dépòt a été opéré, une mème invention aura fait l’objet, pendant le délai de priorité, de plusieurs demandes de brevets ou de plusieurs demandes de brevets additionnels ou certificats d’addition, tontes ces demandes pourront être réunies en une seule pour le dépôt dans un autre pays de l’Union. Tontefois, le délai de priorité applieable à chaeune de ces demandes aura pour point de depart la date à laquelle elle a été déposée.
It was found out that the origin of multiple priorities was combining a original patent and patents of addition.
In Section 26(7) of UK Patents Act 1949, it was stipulated that “The grant of a patent of addition shall not be refused, and a patent granted as a patent of addition shall not be revoked or invalidated, on the ground only that the invention claimed in the complete specification does not involve any inventive step having regard to any publication or use of”.
However, although the requirement of inventive step did not exist in 1911, even if the original patent was issued (and the invention was known to people), there is no change in the patent of addition was not rejected.
This situation is consistent with “umbrella” theory rather than “fiction” theory.
Furthermore “fiction” theory was not valid in “Convention de Paris pour la protection de la propriété industrielle (1883)”. “Par la publication de l’invention ou son exploitation par un tiers” means that the patent was invalidated if the exploitation by the inventor himself. Namely, dates of filing is not always deemed to date of priority.
“Actes de la Conférence de Washington de 1911” is attached to Stepan G. Fucks. I was surprised to recognise that the title of “ALINÉA 5 NOUVEA” was not “Priorités multiples” but “Brevets additionnels”.
Moreover, the word “brevets additionnels” can also be found in the actual proposition.
Namely, the fifth paragraph of the proposition is following as:
Lorsque, dans le pays où le premier dépòt a été opéré, une mème invention aura fait l’objet, pendant le délai de priorité, de plusieurs demandes de brevets ou de plusieurs demandes de brevets additionnels ou certificats d’addition, tontes ces demandes pourront être réunies en une seule pour le dépôt dans un autre pays de l’Union. Tontefois, le délai de priorité applieable à chaeune de ces demandes aura pour point de depart la date à laquelle elle a été déposée.
It was found out that the origin of multiple priorities was combining original patent and patent of addition.
In section 26(7) of UK Patents Act 1949, it was stipulated that “The grant of a patent of addition shall not be refused, and a patent granted as a patent of addition shall not be revoked or invalidated, on the ground only that the invention claimed in the complete specification does not involve any inventive step having regard to any publication or use of”.
However, although the requirement of inventive step did not exist in 1911, even if the original patent was issued (and the invention was known to people), there is no change in the patent of addition was not rejected.
This situation is consistent with “umbrella” theory rather than “fiction” theory.
Furthermore “fiction” theory was not valid in “Convention de Paris pour la protection de la propriété industrielle (1883)”. “Par la publication de l’invention ou son exploitation par un tiers” means that the patent was invalidated if the exploitation by the inventor himself. Namely, dates of filing is not always deemed to date of priority.
http://www.wipo.int/wipolex/en/treaties/text.jsp?file_id=287780
Asian patent practitioner
I am sorry. I mistook the processing of copy and paste.
ReplyDeleteAsian patent practitioner
Respectfully I inform you that the Incomming letter in referral procedure of 25.02.2016 is the President comment.
ReplyDeleteAsian patent practitioner
Thanks! I don't know how I missed that one. I will update the post accordingly.
ReplyDeleteThe president's comments at para 144 rather sit on the fence (approving the "limited number of clearly defined alternatives", while saying this has been interpreted rather too narrowly and disapproving the "broad" approach), which I don't think is as helpful as it might be.
ReplyDeleteThe Enlarged Board has set 7 and 8 June 2016 as the date for oral proceedings. The Register also now has what I assume should be full lists of all the amicus briefs which they have sent to the parties.
ReplyDeleteI think you can be forgiven for missing the President's comments, as I don't think they were online earlier. The Registry seems to be slotting briefs into chronological order of receipt, even though some have been delayed before they were uploaded.
There seems to be a number of these delayed briefs which are therefore not yet in your list. A couple more I've spotted are from FICPI, the source of the famous Memorandum 40-odd years ago, and LES (Britain & Ireland). There are probably others.
Thanks Tim. I will take a look and do another update.
Delete