Partial priority and the prior art that both is and isn’t

Partial priority is one of those areas of European patent law that seems straightforward once the Enlarged Board has explained it, right up until somebody tries to apply it to an inventive-step attack.

The basic principle from G 1/15 is now familiar. A claim containing generic “OR” subject-matter can enjoy partial priority for an alternative disclosed in the priority application, without that alternative having to be expressly carved out in the wording of the claim. The claim can instead be conceptually divided into the part entitled to priority and the remaining part that is not.

This is useful for dealing with the formerly troublesome problem of “poisonous priority”. What is rather less clear is what happens when a priority-year publication discloses the priority-entitled embodiment, but an opponent wants to use that embodiment as the starting point for an inventive-step attack against a different part of the claim.

Two recent decisions, T 2615/22 and T 195/25, approach this question from slightly different directions. The second decision also has some fairly pointed things to say about an earlier decision, T 307/22, which it describes as “isolated”. This is not normally a sign that everything is entirely settled.

A brief reminder about partial priority

According to G 1/15 (see here for my post), entitlement to partial priority cannot be refused merely because the relevant alternatives are expressed generically in the claim. The exercise involves identifying the subject-matter disclosed directly, or at least implicitly, unambiguously and sufficiently in the priority document, and then treating that subject-matter as a notional alternative within the claim.

The EPO Guidelines on multiple and partial priorities describe this by reference to different alternatives within the same claim having different effective dates. They also make clear that separate priority disclosures cannot simply be mosaicked together to create a combination that was not disclosed in either.

So far, so reasonably straightforward. The difficulty comes when the same physical product or method appears in a publication during the priority interval.

Is that publication prior art against the whole claim because some of the claim has the later filing date? Or is its disclosure protected because the thing actually shown in the publication is within the priority-entitled part?

The answer, perhaps unsurprisingly, appears to be that it depends on exactly what is being attacked and precisely what the intervening document discloses.

Water balloons in T 2615/22

T 2615/22 concerned the familiar type of device in which several water balloons can be filled at once. The claimed apparatus had a housing connected to a fluid supply, multiple hollow tubes and inflatable containers attached to the tubes. Elastic rings both held the containers in place and sealed them when they were released.

The case involved three priority applications. For present purposes, the important priority disclosure was of a particular construction having:

• a threaded opening at a first end of the housing;
• a second end of the housing; and
• hollow tubes attached to or inserted into holes at that second end.

The claims before the Board were broader. Among other things, they covered non-threaded openings and arrangements in which the tubes did not have to be attached to holes at a second end.

The Board concluded that the priority applications directly and unambiguously disclosed the claimed functional arrangement of the elastic rings. However, priority was available only for the more particular housing construction actually disclosed in the priority documents.

The claim was therefore notionally divided into at least two parts. One part covered the threaded, second-end, attached-tube arrangement and enjoyed priority. The rest of the claim, including non-threaded and differently constructed alternatives, had only the European filing date.

The intervening Bunch-o-Balloons disclosures

Documents D7 to D14 related to the commercial Bunch-o-Balloons product and had been made available after commendably precise. D9 and D12 showed the same particular construction as the priority applications: a threaded opening and tubes attached to holes at a second end. That disclosed subject-matter fell within the priority-entitled part of the claims. For that part, D7 to D14 did not form part of the prior art.

For the remaining parts of the claims, the publications fell within the relevant prior-art period. They did not, however, disclose those broader alternatives. In particular, they did not disclose a housing with a non-threaded opening or one lacking the particular second-end arrangement.

The intervening publications therefore did not anticipate either part:

• for the part they disclosed, the claim had priority; and
• for the parts lacking priority, the publications did not contain the necessary disclosure.

This is partial priority doing precisely the job it is supposed to do. A later publication of the same embodiment does not become novelty-destroying merely because that embodiment sits inside a broader generic claim.

Inventive step was another matter

The opponent also wanted to pursue inventive-step attacks based on the Bunch-o-Balloons disclosures.

The Board did not decide those attacks. It noted that the question whether the non-priority parts of the claims involved an inventive step over D7 to D14, together with common general knowledge or D17, had not been addressed in the opposition proceedings.

The case was remitted because novelty and inventive step required different analyses. In particular, inventive step required application of the problem-solution approach and consideration of the distinguishing features.

The decision consequently left the door at least partly open. It treated D7 to D14 as belonging to the prior art for the non-priority parts of the claims, although it did not decide exactly how disclosures of the priority-entitled construction could properly be used in an inventive-step argument directed to those other parts.

That unanswered question was rather more squarely confronted in T 195/25.

Steel slag in T 195/25

T 195/25 concerned a method of making carbonate-bonded construction blocks from steel-making residues.

Claim 1 required granular material and a binder including steel slag to be mixed with water, compacted at a pressure below 20 MPa, subjected to a reduction in water content and then cured using carbon dioxide.

Specific examples in the patent used:

• a compaction pressure of 12 MPa;
• a first water-to-slag ratio of 0.20; and
• a second water-to-slag ratio of 0.10.

The same examples appeared in the priority application D11 and in a later PhD thesis, D12. It was common ground that these examples were entitled to priority from D11. The broader subject-matter covered by claim 1 did not necessarily enjoy the same priority.

The opponent’s argument was ingenious, although ultimately unsuccessful. It proposed taking the 12 MPa example from D12 and modifying it in view of D5 or D16. By changing the compaction pressure, the skilled person would supposedly arrive at subject-matter within claim 1 but outside the specific embodiment entitled to priority.

In effect, the opponent sought to start inside the priority island and then sail out into the later-dated waters surrounding it.

The Board was having none of this.

If it isn’t prior art, you cannot start from it

The Board held that where a claim enjoys partial priority for a specific embodiment, the same embodiment disclosed in a non-patent document published during the priority year cannot be used as the starting point for an inventive-step attack against the part of the claim that does not enjoy priority.

D12 had been published after D11. The relevant examples in D12 were identical to those in D11 and in the patent. The subject-matter of those examples was therefore protected by the priority claim and did not form part of the state of the art under Article 54(2) EPC.

Article 56 EPC provides that inventive step is to be assessed having regard to the state of the art. The Board concluded that only subject-matter forming part of the Article 54(2) state of the art could be used in that assessment.

The D12 examples could consequently not be relied on “as a starting point or otherwise” when assessing inventive step.

This is the crucial part of the decision. The fact that the proposed endpoint of the obviousness analysis lay outside the priority-entitled embodiment did not somehow turn the starting embodiment into prior art.

Put another way, partial priority applies to subject-matter, not merely to the final wording against which novelty is assessed. If a particular technical teaching has the priority date, that teaching cannot be stripped of its effective date and used as an Article 54(2) springboard merely because the opponent proposes changing one of its features.

What about T 307/22?

The opponent relied on T 307/22, in which an embodiment appearing both in a priority document and in a priority-year publication had been permitted as the starting point for assessing inventive step.

The Board in T 195/25 declined to follow that approach. It instead regarded its conclusion as consistent with T 2073/22, T 1482/21 and T 211/06.

The Board went further when dealing with the requested referral to the Enlarged Board. It described T 307/22 as appearing to be an “isolated decision” supporting the opponent’s view. The alleged support from T 665/00 was dismissed as speculative because the disputed prior use in that case had not ultimately been employed in an inventive-step attack.

Despite this apparent divergence, no question was referred. The Board maintained that Article 56 provided the answer: if the relevant subject-matter was not part of the Article 54(2) state of the art, it could not be used for inventive step.

This is certainly a clean answer. Whether all Boards will consider it quite so straightforward remains to be seen.

Are the two decisions inconsistent?

At first sight, there is a possible tension.

In T 2615/22, the intervening Bunch-o-Balloons disclosures were treated as prior art for the parts of the claim not entitled to priority. An inventive-step attack based on those disclosures was remitted for consideration.

In T 195/25, the intervening thesis could not be used as a starting point against the part of the claim lacking priority because the embodiment it actually disclosed was itself entitled to priority.

The decisions can, however, be reconciled if attention is paid to two separate questions.

The first question is:

Which part of the claim is being attacked, and what is its effective date?

That was the main focus in T 2615/22. The Board divided the claim into priority and non-priority parts and tested novelty separately against each.

The second question is:

What precise technical teaching in the intervening document is being relied on, and is that teaching itself part of the Article 54(2) state of the art?

That was the decisive point in T 195/25.

An intervening document might contain additional disclosure falling outside the priority-entitled subject-matter. That additional teaching may be prior art against the non-priority part of the claim. Nothing in T 195/25 appears to prevent such an attack.

What an opponent cannot do, according to T 195/25, is rely exclusively on the embodiment protected by priority and then use the inconvenience of inventive-step reasoning to transport that embodiment into the unprotected remainder.

This seems correct. Otherwise, the result would be rather odd. A document would be incapable of anticipating the priority-entitled embodiment but could nevertheless be used as the starting point for modifying that very embodiment. It would be prior art for inventive step while not being part of the Article 54(2) state of the art from which Article 56 says inventive step is to be assessed.

A possible difficulty with the remittal in T 2615/22

Although the two decisions are distinguishable, T 195/25 may affect what can now be done with the remitted inventive-step issue in T 2615/22.

The Bunch-o-Balloons materials apparently disclosed the particular arrangement entitled to priority. They did not disclose the broader alternatives for which priority was unavailable.

If an inventive-step attack begins with precisely that protected arrangement and then proposes modifying it into, for example, a non-threaded version, the reasoning in T 195/25 suggests that the attack should not get started. The disclosed starting arrangement is not Article 54(2) prior art.

There may still be a valid attack if one of the intervening documents contains some separate technical teaching outside the priority disclosure, or if an earlier document provides a proper Article 54(2) starting point. Merely observing that the target part of the claim has a later effective date should not be sufficient.

This may be the most useful general lesson from T 195/25. Partial priority requires a two-sided comparison. It is not enough to identify the effective date of the claimed endpoint. The effective status of the proposed starting disclosure must also be established.

Some practical consequences

For patentees, the decisions confirm the value of putting detailed embodiments and worked examples into the priority application. Even if the eventual claim is broader, the particular subject-matter originally disclosed may retain its priority date as a notional part of the claim.

That can have consequences beyond novelty. Following T 195/25, a later paper, thesis, poster or product disclosure reproducing the priority example cannot be used as a convenient starting point for an inventive-step argument simply because the final claim covers more than the example.

For opponents, an attack needs to be mapped rather more carefully. It will be necessary to identify:

1. the part of the claim that lacks priority;
2. the subject-matter actually disclosed by the proposed starting document;
3. whether that disclosed subject-matter is itself outside the priority-entitled part; and
4. why it provides a proper Article 54(2) starting point for the problem-solution approach.

It is not enough to begin with a protected embodiment and announce that the skilled person could have changed it.

For those drafting priority applications, the message is much the same as it usually is: disclose the important combinations properly the first time. Broad claims can come later. A clearly disclosed embodiment may enjoy a surprisingly useful afterlife when priority is examined subject-matter by subject-matter.

Conclusion

T 2615/22 shows the now orthodox application of partial priority to novelty. A generic claim is conceptually divided, and an intervening disclosure is tested separately against the priority-entitled and non-priority alternatives.

T 195/25 takes the analysis one step further. It holds that the priority-entitled embodiment is not merely protected against anticipation. It is also unavailable as the starting point for an inventive-step attack directed to the later-dated remainder of the claim.

The emerging principle appears to be:

A claim may have different effective dates across its scope, but a specific embodiment entitled to the earlier date does not become prior art merely because an opponent proposes modifying it into a part of the claim having the later date.

Whether the approach in T 307/22 remains merely an isolated curiosity, or eventually prompts a referral, will be worth watching. The Boards have occasionally been known to disagree about supposedly straightforward points of priority law. That is, after all, how we ended up needing G 1/15 in the first place. Personally, however, I doubt whether the Board in T 195/22 got it right. If a disclosure in the intervening priority period is Article 54(2) prior art, it should be usable for both novelty and inventive step for the part of claim that is not entitled to priority. G 1/15 only applied to cases where the intervening prior art was Article 54(3) prior art. 

G 1/15 - The Wait is Over

Back in 2011 I wrote about a potential problem that had been identified to do with priority and EP divisional applications. This problem was confirmed a couple of years later, after which I had a think and came up with a solution. This turned out to be similar to a solution that was considered by the EPO Boards of Appeal in T 1222/11. This was not, however, the end of the story.

The problem, put simply, is that if a European application claims an invention more broadly than is disclosed in a priority application, can partial priority be allowed for what is disclosed in the priority application. If not, then the priority application, if it also publishes as a European application, becomes A54(3) prior art and knocks out the claimed invention. If partial priority is allowed, then the problem goes away (for reasons given here). The Enlarged Board in G 2/98 set out a proviso regarding when partial priority would be allowed under A88(2), which was only if it gave rise to a "limited number of clearly defined alternative subject-matters" (point 6.7). The meaning of this has been argued over for the past few years and a referral was made in August 2015 to the Enlarged Board in T 557/13, which asked the following question:

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?

The referral, which was numbered G 1/15, generated a lot of interest, as evidenced by the number of amicus briefs filed, as well as the number of comments received on this blog. Most of the briefs recommended a 'no' answer to question 1, which would cause the problem to go away. Following a hearing in June last year, the Enlarged Board issued an order that gave the following answer to the question:

Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect.

As far as I could see, this made the problem go away. There would no longer be any issue over partial priority and possible collisions between a priority document and a European application. Simply answering the question, however, was not the full story. The Enlarged Board has now issued their full reasoned decision, which has just appeared on the EP register here.

The decision goes over all of the arguments put forward along the way, which regular readers will already be well aware of (see the links above to previous posts). What the key question concentrates on is what was meant in G 2/98 by "a limited number of clearly defined alternative subject-matters", and how this could be aligned with the EPC and with the famous FICPI Memorandum that apparently expressed the legislative intent behind A88(2). I have tried to make it clear on this blog that the examples in the Memorandum must be consistent with any interpretation of A88(2), and partial priority should be assessed accordingly. Others, including the respondent in G 1/15 have effectively argued that this does not need to be the case.

The reasoning in G 1/15, as you would expect, starts from basic principles of priority, and develops towards the principles of partial and multiple priorities, leading up to the Memorandum, which defined examples where multiple priorities should be allowed in a single claim. The Enlarged Board thankfully make it quite clear that the Memorandum is indeed consistent with A88 and the Paris Convention, and then lead up to the inevitable consequence that the proviso in G 2/98 "cannot be construed as implying a further limitation of the right of priority" (point 5.3). This is enough in itself to reach a 'no' answer to question 1, but the Enlarged Board go on to lay out in clear terms how partial priority should be assessed. This is laid out at the end of the reasons for the decision, at points 6.4 to 6.7, which state:

In assessing whether a subject-matter within a generic "OR" claim may enjoy partial priority, the first step is to determine the subject-matter disclosed in the priority document that is relevant, i.e. relevant in respect of prior art disclosed in the priority interval. This is to be done in accordance with the disclosure test laid down in the conclusion of G 2/98 and on the basis of explanations put forward by the applicant or patent proprietor to support his claim to priority, in order to show what the skilled person would have been able to derive from the priority document. The next step is to examine whether this subject-matter is encompassed by the claim of the application or patent claiming said priority. If the answer is yes, the claim is de facto conceptually divided into two parts, the first corresponding to the invention disclosed directly and unambiguously in the priority document, the second being the remaining part of the subsequent generic "OR"—claim not enjoying this priority but itself giving rise to a right to priority, as laid down in Article 88(3) EPC.

This also corresponds, logically and exactly, to the scheme described in the Memorandum (see point 5.2 above): "If 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 of the application directed to A or B will in fact consist of two distinct parts A and B respectively, each complete in itself...", and further: "... it would be appropriate to claim a partial priority in situations corresponding to the "OR"-situation under "Multiple Priorities", the European patent application itself taking the place of the second priority document".

The task of determining what is the relevant disclosure of the priority document taken as a whole, and whether that subject—matter is encompassed by the claim in the subsequent application, is common practice in the EPO and among practitioners of the European patent system and as such should not pose any additional difficulty. Nor does it create uncertainty for third parties, as argued by the respondent and in some amicus curiae briefs. Although it can be a demanding intellectual exercise, the decisions reached in cases T 665/00, T 135/01, T 571/10 and T 1222/11 all show that it can be carried out without any need for additional tests or steps.

From this analysis it follows that the assessment of entitlement to partial priority right does not show that any additional requirements are needed.

Just to make it clear, here is a simple flowchart I have created that defines the process to follow when considering whether partial priority should be allowed.

It should go without saying, but I'll say it anyway, that this is what I have been arguing in favour of all along. It should also go without saying that this decision really does put the final nail in the coffin for poisonous divisionals and poisonous priority. Conventional best drafting practice is still acceptable, and we can carry on as before.

G 1/15 - The answer is NO

As I mentioned in my report of the oral proceedings back in June this year, the Enlarged Board in the case of G 1/15 (partial priority) promised that a decision would be made by November this year. True to their word (but only just), an order has just appeared on the EPO register today, which is dated yesterday. The order states in full:

Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect.

As readers may recall, this is a response to the first question referred to the Enlarged Board, which was:

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?

In other words, the answer to question 1 is a clear "no". All the other questions were dependent on question 1 being answered in the affirmative, so they now all fall away and need not be answered.

No reasoning has yet been provided behind the order, but this will apparently be issued "as soon as possible", according to the accompanying letter to the EPO president. For now, we can at least be satisfied that the problem of poisonous priority and poisonous divisionals has finally been laid to rest and the flawed case law from the technical boards, as well as in some court decisions (such as this one, which I wrote about here), can be set aside.

Just for the record, I would like to say that I was right all along.

G 1/15: The wait is nearly over

The EPO Isar building in Munich on a lovely sunny day. 

As I mentioned in an earlier post a couple of months ago, I arranged to get out of the office to attend the oral proceedings for the Enlarged Board (EB) case of G 1/15 on partial priority that were scheduled for 7 & 8 June 2016. As it turns out, the second day is not now going to be needed, because the EB concluded the proceedings at just before 3pm today, following just a few short hours of submissions and brief discussions from each side.

Although the EB did not give any clear indication of how they were going to decide the matter (unlike in lower board of appeal cases, where a decision is normally announced at the end of the proceedings), there were some clues as to how things might turns out. What follows is a brief, and necessarily biased, view of how the proceedings went. It is biased, not only because I have a clear opinion on how the issue should be settled, but because the respondent spoke only in German, with interpretation not being provided for attending members of the public (I even asked, and was bluntly refused, even though there were several spare headsets available), and my understanding of German was just not good enough to closely follow the respondent's speeches. Thanks to other attendees, however, I managed to get at least the gist of what the respondent's arguments were, and they did not seem to be much different to what had already been presented in written arguments and elsewhere. Following several years of discussing the various arguments regarding partial (and poisonous) priority, there was in any case unlikely to be anything that came up today that hadn't already been said somewhere.

The issue, just to remind those that haven't been following this for the past few years, is about whether a claim in a European patent (or application) that does not have a full right to priority can be knocked out by publication of the priority application as another European application. If the European application claims something more broadly than is disclosed in the priority application, can this narrow disclosure be Article 54(3) prior art for the later application? The issue was first set out in 2011, and has been discussed many times on this blog, so I won't say any more about it (you can in any case view all of the relevant posts here if you want to catch up).

Following submissions on the case that were provided by the appellant (Infineum), the opponent/respondent (Clariant) and on behalf of the EPO President, along with quite a few amicus briefs, all of which are summarised in my earlier post here, the EB invited all these parties to the hearing to set out their case. They did not, however, set out any preliminary opinion or agenda of things they wanted to discuss, which was fairly unusual for any Board of Appeal case. Whether this meant that they had already made up their mind and were just going through the motions is impossible to tell, but might I suspect be fairly close to the truth, given how things turned out on the day.

The EB was made up of seven members, with F. Blumer and I. Beckerdorf as legally qualified members, W. Sieber and H. Meinders as technically qualified members, P. Carlson as an external legally qualified member, C. Vallet as a further legally qualified member and rapporteur, and W. van der Eijk as chairman. The chairman kicked off proceedings just after 9am by reading the questions that had been referred to them in decision T 557/13 of 17 July last year (which I wrote about here). These are:

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 chairman noted the importance of the questions raised, which was emphasised by the submissions provided by the parties and the fact that there had also been 33 amicus briefs filed (which thankfully matches my last count of 36 in all). The EB had studied the submissions and taken note of them, so didn't want to hear all of the arguments again but wanted to hear anything that had not been already set out. This might have made the proceedings very brief indeed, as there really wasn't anything else to say that had not already made it to the file, but all sides had a go anyway, as you might expect.

An important point to note is that the Chairman made it clear the referral was considered to be admissible, because it related to a point of law of fundamental importance and on which there was a clear divergence in the case law. There was therefore no need to discuss the question of admissibility (unlike, for example, the case of G 3/08, which I was to a small extent involved with), and none of the parties raised this in their arguments.

The submissions started with Infineum, whose representative Richard Hart went through the various key points as he saw them relating to the questions. One of the more general points raised was that, from the industry context, it had to be recognised that inventing was difficult and did not stop with the first filing. It was therefore very common for an invention to change, and possibly broadening, during the priority year. Having an effective bar to being able to broaden the resulting claims in a patent would result in the patenting system being far too harsh on the applicant, who typically would have spent a lot of effort getting to the point of filing a patent application, and would have done much else that did not result in one. A strict approach to partial priority could therefore act against the interests of the system, as well as being unreasonable in allowing a patent to act against itself. There was a general principle that the scope of a patent should be commensurate with the contribution. If a broader contribution, backed up by further work in the later filed application, could not be protected, this pulled in the opposite direction.

On the substantive legal points, Mr Hart set out the usual arguments starting from Article 88 EPC, which should be interpreted according to the travaux preparatoires, mentioning the now famous FICPI Memorandum, which set out the legislative intent behind Article 88(2), second sentence. Using the memorandum was one way of figuring out how to interpret the legislation, while another way was to consider indirect interpretations based on the Paris Convention, which the EPC was a special agreement within. Article 32 of the Vienna Convention specified supplementary means as a way of interpreting, which the memorandum certainly was. A key point relating to this is that the examples in the memorandum could only be reconciled with the conceptual approach to partial priority, whereas the strict approach could not. There was then a lot of discussion about Articles 4F and 4G of the Paris Convention and commentary by Professor Bodenhausen, during which the EB appeared to be getting a bit bored, and which I will not bore you further with.

The key points to Mr Hart's submissions appeared to be, as we have seen before, that the conceptual approach is the only one that can be made consistent with everything else, including the concept that the test for novelty is essentially the same as the test for priority. If the tests were to be different, which they would need to be if the more strict literal approach were to be taken, then the test applied for assessing priority would result in nonsensical results for novelty. The proper test was, as with that for novelty, to compare the disclosures and determine the boundary of the claim, then determine what falls within the scope of the claim. The decision in G 2/98 could be viewed, as the respondent had done, that a new more restrictive test was being laid out on partial priority, or that it wasn't. It was, in Mr Hart's view, more likely that the EB in that case were not trying to set out a new test, and that later decisions were simply a misunderstanding of what was meant by "a limited number of clearly defined alternative subject-matters" in point 6.7 of the reasons. The later decision of T 1222/11 was the first one to have properly considered how this should be aligned with the EPC, setting Article 88(2) in its proper context.

After a short break, the opponent/respondent, represented by Mr Mikulecky, was given his turn to set out his case. As I mentioned above, I was not able to follow his arguments very closely, but the gist of his case was that the more strict approach to partial priority should be followed because G 2/98 had set out a new test to be met. The fact that this could not be reconciled with at least some of the examples in the memorandum was, in Mr Mikulecky's submissions, a sign that, although the legislative intent was clear when the EPC was first drafted, times change and the intent changes with them. If I am understanding this correctly, this seems to me like a very strange argument, because if G 2/98 was trying to set out a new interpretation of Article 88(2) EPC it would have said so rather than just referring to the memorandum as expressing the legislative intent without making it clear that this was no longer the case.

Another point made by Mr Mikulecky related to the consequences of taking the strict literal approach. In his submission, these consequences were just a feature of the system, and had to be dealt with by better drafting. If the invention had been broadened out during the priority year, the applicant just had to take more care when preparing the later application to make sure that there was sufficient basis for all separable embodiments. In my view, this is a more sensible argument, although still wrong because it would inevitably lead to applicants having to include ever increasing amounts of what effectively amounts to boiler plate language to make sure that all embodiments were either claimed or disclaimed. This was surely not what the legislator intended, and is definitely contrary to the memorandum, which makes it quite clear that the main reason for allowing multiple priorities is to prevent this sort of thing being necessary.

The EB then gave the EPO President a chance to express his views. Unfortunately, whether out of time pressures or fears for his own safety, the President himself could not be there. He did, however, send a couple of representatives, who did the job for him. As with the written submissions, the President did not make it entirely clear which side of the fence he was on, although it seemed that he was more in favour of the conceptual view than the strict literal view. Apart from some comments about the EPO requiring an approach that was practical and not over complex, and that not allowing priority for a part of a claim that was not spelled out as such was contrary to common practice, the President did not have much further to say of substance. There was, however, a comment about the adverse consequences of following the literal approach, which would inevitably lead to increased complexity in applications and a consequential increase in legal uncertainty for third parties.

After lunch, each of the parties were given an opportunity to respond to what the others had said earlier. Not much of interest was raised at that point, but there was an odd discussion about what would be the consequences of leaving out a chunk of the priority document in a later filing, on which priority depended. I suspect this is not going to be a key feature of the EB's reasoning, so I will leave it there.

Finally, after a short break while everybody went outside as a result of a fire alarm (pictured right; it turned out the EPO was not on fire, and the alarm was probably just some building work setting it off), the EB had a chance to ask some questions. Only five of the members asked any questions, and this took up the final 20 minutes or so of the proceedings. The impression I got from this was that the EB did not really need to know any more from the parties, and had therefore probably already made up their minds. The most interesting question, in my view, came from the Chairman, who asked the respondent how the intent of the legislation could have changed over the 40 or so years since it was prepared. What had made this intent change? The questions, along with the body language of the EB members, which seemed to express boredom with the appellant and annoyance at the respondent, gave me the general feeling that they were largely sceptical of the respondent's arguments.

At the end, the Chairman announced that a decision would be made "as soon as possible" (which raised a small ripple of laughter from the audience), but that this would be by November this year. This fits with the impression I have gathered previously from discussing the issue with people from the EPO, who think that this is an important issue that needs resolving soon. I might as well stick my neck out now and say that I think the decision will be in favour of the appellant, and the answer to question 1 is likely to be either a clear "no" or possibly a "no" with some very limited caveats. The answer to question 5, which I suspect the EB will deal with at least partly as a separate question and not necessarily dependent on question 1, will be a clear "no", regardless of how the answer is arrived at. We now only have a few months to wait. I will, of course, write about it as soon as I hear.

Any comments on the above would be gratefully received, particularly if they go over any points that were raised at the hearing but that I have not covered.

UPDATE 9/6/16: Here's a tweet from me asking for your opinion on what the answer to question 1 is going to be. Just a bit of fun, but it would be interesting to see what your view is. Please vote!

What do you think is going to be the answer to Q1 in #G1_15?

— Tufty Sylvestris (@tuftythecat) 8 June 2016

UPDATE 22 June 2016: The minutes of the oral proceedings have now appeared on the EP register here. They are a bit more brief than my report, and the only useful piece of information is the confirmation that the EB will be issuing their decision by November.

UPDATE 25/11/16: An unusual third party observation has just appeared on the register, although it was filed a month ago. It says:

"Die Große Beschwerdekammer hat in mit dem vorliegenden Verfahren überlappender Besetztung in ihrer Entscheidung Art. 23 1/16 vom 16. Juni 2016, Absätze 39-45 festgestellt, dass sie Drohungen des Präsidenten des Europäischen Patentamtes ausgesetzt sei, die alle Mitglieder beträfen,die sie darin gehindert habe, bestimmte Entscheidungen treffen zu können. Auch der Verwaltungsrat habe diese Bedenken nach Ansicht der Großen Kammer nicht ausgeräumt. Auch im vorliegenden Falle war der Präsident durch seine Vertreter in der mündlichen Verhandlung am Verfahren beteiligt, obgleich nicht Partei. Besagte Entscheidung wurde entgegen der ausdrücklichen Anordnung der Großen Beschwerdekammer bis dato nicht veröffentlicht, ist aber der Öffentlichkeit anderwärtig zugänglich. Ein Organ, das Drohungen ausgesetzt ist, das sich nicht in der Lage sieht seine Verhandlung entgegen anderslautender Absicht öffentlich zu führen und ihre Entscheidungen der Öffentlichkeit zugänglich zu machen, ist auch im vorliegenden Falle nicht im Stande eine unvoreingenommene Entscheidung zu treffen. Gegen die gesamte Große Beschwerdekammer besteht auch im vorliegenden Falle der begründete Verdacht der Befangenheit, der solange fortbesteht, wie sie disziplinär dem Präsidenten bzw, des Aufsichtsrates unterstehen. Sie können in Folge keine wie immer gerartete richterliche Funktion wahrnehmen."

As I understand it, the gist of the argument is that the EB is unable to make an unbiased decision because they have been subject to threats from the President and may therefore be biased. I can't see it having any effect on the decision, which is due to appear any time now, as it hasn't been raised previously, but we shall see.

Latest tweets on G 1/15:
#G1_15 Tweets

G 1/15 (partial priority) - an update

My post on the G 1/15 amicus briefs, initially written on 3 March, has been amended extensively as the briefs kept on appearing on the EP register. The total, including comments from the EPO President, the patentee and the opponent, has now risen to 37 following a very late submission from Malcolm Lawrence, now of Concerto IP. The drawing on the right is taken from this submission, and is a fairly typical example of how clearly the issue is presented.

As you may recall, Mr Lawrence was in some ways responsible for the whole problem of poisonous divisionals and related issues, which he first raised as an issue in an article for epi information in June 2011, which I commented on here. At the time, no mention was made of Article 88(2) EPC being a solution to the problem, or even being related to it at all. I first raised it as a possible solution in a post in May 2013 here, which has since been given the name "Tufty's Law", although the same reasoning was arrived at a few months earlier in T 1222/11. His latest submissions, which do mention Article 88(2), are typically very wordy, running to a total of 39 pages, including drawings. Thankfully it is only necessary to read the first page to find out what he thinks the answer to question 1 should be, which is a qualified yes. I have not read the remaining 38 pages (as I value my sanity too much, what is left of it) but if anyone reading this has, and finds any interesting points, I would be grateful for any comments pointing them out.

Oral proceedings have been scheduled for 7-8 June 2016 at the EPO in Munich for the Enlarged Board to hear submissions from the parties in the proceedings. A final decision will presumably be arrived at a few months afterwards. Because this is an issue I have been keeping an eye on for several years, I have persuaded myself that it would be good idea to go to Munich to attend the oral proceedings so I can see for myself how the arguments are presented and maybe get an idea of the thinking of the Enlarged Board. A blog post or two will of course be written while I am there. If any readers are going to be there too, please get in touch with me and we can meet up. I can be contacted at tuftythecat at gmail dot com or via Twitter @tuftythecat. I also have a work email address, which is fairly easy to find.

G 1/15 Amicus Briefs

The deadline for filing amicus briefs on the case of G 1/15 regarding partial priority was on 1 March 2016. This was also the deadline set by the Enlarged Board for the EPO President to submit his comments. Now that all comments and briefs are in, the Enlarged Board has indicated that oral proceedings will be held on 7 and 8 June 2016 at the EPO in Munich, and has communicated all of the comments submitted to the parties.

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
Association of the British Pharmaceutical Industry	No	-	-	-	-
Anonymous (Japanese practitioner)	No	-	-	-	-
Anonymous	Yes	Yes	As stated	n/a	Unanswered
Bardehle Pagenberg	No	-	-	-	-
Alexander Esslinger (Betten & Resch)	No	-	-	-	-
Business Europe	No	-	-	-	-
CIPA	No	-	-	-	No
CNCPI	No	-	-	-	-
Delta Patents	No	-	-	-	-
efpia	No	-	-	-	No
epi	No	No	impossible to answer	partial priority must be respected	No
EPO President	Unclear	-	-	G 2/98 in context of EB disclosure test	No
Ericsson	Yes	unclear	as stated	unclear	No
FICPI	No	-	-	-	-
Fleischer Engels	Yes	?	?	?	?
Francis Leyder	-	-	-	-	-
Gabriel de Kernier	Yes	Yes	G 2/98	n/a	Yes (?)
Haseltine Lake	No	-	-	-	-
Infineum (applicant / proprietor)	No	-	-	-	-
IP Federation	No	-	-	-	-
IP Lawyers Association	No	-	-	-	-
IP Owners Association	No	-	-	-	-
Klaus Mikulecky (Respondent)	Yes	Yes	As stated	n/a	Yes
LES (Britain & Ireland)	No	-	-	-	No
Lichti	?
NLO	No	-	-	-	No
Olena Butriy	?	?	?	?	?
Patentanwaltskammer	No	-	-	-	-
Pekka Heino	No (with caveats)	-	-	-	-
Stefan Fuchs	No	-	-	-	-
Tobias Bremi	No (?)	-	-	-	-
VNONCW	No (preferred)	Yes (if q1=no)	Based on T 571/10	n/a	No
Vossius & Partner	-	-	-	-	No
Wallinger Ricker Schlotter Tostmann	No	-	-	-	-
WSGR	-	-	-	-	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.