Monday, 17 August 2015

All change for priority at the EPO? A referral is reviewed

EPO: some important issues have been flagged
for close attention and an authoritative ruling
The European patent fraternity has been buzzing with excitement over the referral of some of its most controversial issues involving the priority of patent claims to an Enlarged Board of Appeal of the European Patent Office for what, it is hoped, will be some definitive answers. If nothing else, this referral is likely to press the pause button on a substantial number of ongoing proceedings, as interested parties apply for a stay until such time as the Enlarged Board delivers its ruling.  This clear, helpful guest post from Carpmael & Ransford's David Holland, explains why these questions are being asked, so readers can appreciate what their real-world significance might be.
All change for priority at the EPO? 
A new referral to the EPO’s Enlarged Board means that there could be a new test for partial priority at the EPO. At the very least, the referral invites the Enlarged Board to provide clarification of the current test set out in an earlier Enlarged Board decision G 2/98. The UK Courts regularly refer to G 2/98 when assessing priority, as seen in Nestec v Dualit in which Arnold J refused a request for partial priority on the basis of the test set down in G 2/98.  It therefore seems likely that any changes instituted by the Enlarged Board will be felt not just at the EPO but in the national courts too. 

Partial priority: what is it and what does it do? 
Partial priority allows part of a claim which is contained in a patent application to be entitled to an earlier date, where some but not all of the alternatives covered by the claims appear in the priority document (a provisional filing), a concept permitted by Article 88(2) of the European Patent Convention (EPC). The current test for applying Article 88(2) EPC was set down by the Enlarged Board in G 2/98 and permits partial priority provided “it gives rise to the claiming of a limited number of clearly defined alternatives” (Reasons 6.7).

Eugene Markush
For example, a claim to “compounds A or B” where only compound A appeared in the priority document would be entitled to the earlier date, but in relation to compound A only. The “A or B” scenario is simple and uncontested. The divergence between the EPO decisions that led to this referral occurs where a claim generically covers compound A, e.g. by using a generic term or Markush grouping, but does not “clearly define” compound A as an alternative in the text of the claim. Certain EPO decisions (such as T 1222/11 and T 571/10) are generous and assign partial priority by “conceptually” dividing the claim into the “limited number of clearly defined alternatives” required by G 2/98.  The conflicting strict decisions (such as T 1877/08 and T 476/09) argue that mere “conceptual” division of a claim is not permitted by G 2/98, and that instead the text of the claim must identify those alternatives in order for partial priority to be acknowledged. 

The strict test can seemingly never be satisfied by ranges or other generic terms in a claim, as the text of such terms cannot be divided into a limited number of alternatives, whereas the generous approach may allow these generic terms to be divided up and so awarded partial priority.  For example, a range of “5 to 6” in a priority document that had been broadened to a range of “5 to 7” in the claims of the application would completely lose priority under the strict approach, but have partial priority in the range “5 to 6” under the generous approach. Clearly, these two different approaches have serious implications for patent validity where there is intervening art.

The first four questions: how to assess partial priority? 
The questions referred to the Enlarged Board not only ask the Board to decide between these strict and generous approaches, but also give the Board the option of totally abandoning the G 2/98 test  for partial priority, replacing it with a new test, or providing clarification as to how the test should be applied.

Question 1 asks if it is ever possible to deny priority for subject-matter first correctly disclosed in the priority document, where that subject-matter falls within a generic claim: 
“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?”
Question 1 therefore invites the Enlarged Board to remove G 2/98’s “limited number of clearly defined alternatives” test altogether, at least for “generic” claims.  It is unusual for the Enlarged Board to overrule its previous decisions, but this is by no means impossible (e.g. G 1/84 was overruled by G 9/93).

If the Enlarged Board answers “no” to question 1, it would accept that subject-matter first disclosed and enabled in the priority document and encompassed by the claim is entitled to priority regardless of any other considerations. This outcome would end the referral, as the other questions are conditional on an answer of “yes” to question 1. 

Nestec: not just a storm
in a coffee-cup ...
An answer of “no” to question 1 would contrast with the UK Court’s approach in Nestec v Dualit, where Arnold J held that three different housing arrangements covered by the claim were not clearly defined alternatives and so did not qualify for partial priority [2013] EWHC 923 (Pat), paragraph 96.  As a result, Arnold J held that the patent lacked novelty over the publication of the priority document under the UK’s equivalent to Article 54(3) EPC (section 2(3) UK Patents Act), a so-called “poisonous priority” attack. 

If the Enlarged Board considers that the mere disclosure of subject-matter in the priority document (as described in question 1) is not enough to permit partial priority for that part of a generic claim, it has to answer yes to question 1 and so move on to question 2:
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?
Question 2 therefore asks whether the “limited number of clearly defined alternatives” test from G 2/98 is the correct test to use for generic claims.  If the G 2/98 test is found to be the correct one, then the Enlarged Board will move on to question 3, which asks how to use this test: 
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?
If the Enlarged Board disagrees with the G 2/98 test, it does not need to consider question 3 but is instead asked to set a new test in question 4:
4. If the answer to question 2 is no, how is entitlement to partial priority to be assessed for a generic "OR"-claim?
Accordingly, in answering these four questions the Enlarged Board should either remove or clarify the existing partial priority test from G 2/98. A review of the decision referring these questions suggests that the referring Board may have formed a view regarding the correct answer to at least the first four questions. 

The questions referred are accompanied by around 60 pages of legal background produced by the referring Board, including a comprehensive review of the EPO’s case law and how this has been interpreted by the UK Courts (including Nestec v Dualit).  The referring Board concludes that, before G 2/98, a more generous approach was accepted.  The Board finds no mention of the G 2/98 test in these earlier decisions and states that they were not explicitly overruled in G 2/98. The Board also notes that one of the reasons underlying the decision in G 2/98 (evidence of the legislative intent from a contemporaneous FICPI Memorandum) may seem to support a more generous approach to partial priority.

These observations, coupled with the sweeping nature of question 1 as asked by the referring Board, perhaps suggest that this referring Board favours total abandonment of the G 2/98 test for partial priority. The Enlarged Board will make its own decision, and it is likely that it will be assisted by a significant number of amicus briefs from interested parties.

The fifth question: toxic divisionals 
The referring Board was faced with the “toxic divisional” attack, as discussed at length on Tufty the Cat’s blog here, an attack closely related to the “poisonous priority” attack in Nestec v Dualit. The fifth and final question ensures that the Enlarged Board must address this attack even if it requires a strict test for partial priority:
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?”
Grandpa: one family member
who retained his priority date
In the “toxic divisional” attack, the strict G 2/98 approach to partial priority is applied by an opponent in order to invalidate a priority claim. The opponent then argues that a family member (a parent or divisional of the patent in suit) is novelty destroying under the EPO’s novelty-only prior art provisions (Article 54(3) EPC).  This attack relies on a more specific disclosure in the priority document (often an example) which is entitled to priority, set against a generic claim which is not entitled to priority (often because the claims were broadened when filing the application claiming priority).  As a result, the patent loses priority for the broadened claims, but the more specific disclosure in the family member retains its earlier date and so is citable as novelty-only prior art.  

Nestec v Dualit was not a toxic divisional attack because the novelty citation was the priority document (which had, unusually, been allowed to publish as a conventional patent application), rather than a parent or divisional.  While the toxic divisional attack has yet to be the subject of a UK Court decision, it was apparently accepted by an EPO Technical Board of Appeal in T 1496/11, although the issue is hardly discussed in the written decision leading many to question whether it is good law. 

If the Enlarged Board considers that the disclosure of subject-matter in the priority document (as described in question 1) is enough to permit partial priority for that part of a generic claim, then this would provide a permanent antidote to the “toxic divisional” problem.  If the Enlarged Board takes this route (by answering “no” to question 1) then all toxic divisional attacks must fail, because the generic claim would be always entitled to partial priority for any disclosure that appeared in the priority document.  As a result, no family member (parent or divisional) could contain a novelty-destroying disclosure with an earlier effective date.  This would be a simple solution to years of argument on this “toxic divisional” topic, but could potentially cause other complications.

The referring Board clearly appreciates the importance of comprehensively addressing the “toxic divisional” problem, because if the Enlarged Board either confirms and clarifies the G 2/98 test (question 3), or creates a new test (question 4), it must then answer question 5.  Question 5 asks whether a family member (parent or divisional) can ever be novelty-only prior art, regardless of partial priority.  There are a number of underlying legal and public policy points that have been used by patentees to argue that family members are never citeable for novelty against each other. It will therefore be fascinating to see how the Enlarged Board chooses to clarify the law in this area, if such clarification is still required following the answer to question 1.

Time for clarity -- and for dispelling spectres?
The answers to the referred questions will rewrite, or at least clarify, the concept of partial priority. It seems likely that patentees with ongoing actions in which partial priority is pleaded may request a stay until the referred questions have been answered.  If allowed, any stay would last for at least a year, as it is unlikely that the Enlarged Board will issue a decision for quite some time.   

No matter how the Enlarged Board answers the first four questions, it will have to address the “toxic divisional” problem head on.  In light of the increasing number of “toxic divisional” attacks following their apparent validation in T 1496/11, many will hope that the Enlarged Board both clarifies the law regarding partial priority and conclusively dispels the spectre of “toxic divisionals”.

This article is based on a client practice note available from Carpmaels & Ransford’s website here and first publicised on twitter by @CRPharmaIP.


Tim Jackson said...

David, what are the other complications which would potentially be caused if the EBA answers 'no' to Question 1?

Dave said...

Tim - that was the question that occurred to me! I favour a "no" to question 1, but I would be interested in any arguments to the contrary (I may be missing something!).

MaxDrei said...

If the EBA answer to Q1 is "NO" will that not give Art 54(3) EPC more potency, especially with creative Art 54(3) novelty attacks founded on an earlier filing by the Applicant itself?

Given that jurisdictions outside Europe exclude the "whole contents" of Applicant's own (later published but) earlier filings from serving as novelty attacks, might the EBA be politically a bit reluctant to answer Q1 with a NO, and thereby put even more distance between the EPC and the rest of the world?

Tim Jackson said...

I'm leaning towards a 'no' too, but I suppose it might be argued that if they ditch the requirement for "a limited number of clearly defined alternative subject-matters", then there could be uncertainty about the extent of the partial priority? The boundary between which subject matter benefits from the partial priority and which does not might be unclear.

That might lead to arguments about whether an intervening Art. 54(2) publication is novelty-destroying, or merely relevant for obviousness of the rest of the claim.

However, paragraph 11.5.3 of T 1222/11 may help. Although it is talking about a limited number of clearly defined alternative subject-matters, it says that the burden of proof that a particular claim benefits from a partial priority is on the person alleging it.

Tim Jackson said...

Max, surely a 'no' to Q1 would give Art.54(3) less potency, by removing such creative attacks.

MaxDrei said...

Tim, perhaps so. I don't have enough time to think this all through carefully, but nevertheless cannot resist the blogging.

Overnight it occurred to me that there is an asymmetry between Art 54 on the one hand, and Art 87 and 123(2) EPC on the other, and this even though they are to share the same notion of the "disclosure" of a document: This asymmetry might be complicating the debate about partial priorities.

Think of the claim as a balloon and a novelty attack on it as a needle to burst the balloon. The only needle that penetrates is one with a date on it earlier than the date on the balloon. The debate is about allocating dates to needles and balloons.

Think of Art 123(2) and the "intermediate generalisation". Ante-dating a balloon is different from ante-dating a needle. This because the needle needs no "width" to do its job. What we are doing with both Art 87 and Art 123(2) is arguing about the width of various balloons.

It seems to be harder to get a balloon ante-dated than a needle. Is this as it should be? Will the EBA make it even harder, or will it ease the task, to restore some balance between Opponent and patent proprietor, between reasonable legal certainty on the one hand, and fair protection for the inventor on the other (and out of recognition of the difficulties for the only too human patent drafter)?

Eric said...

As a side remark on question 5: beside the situation of partial priority, there also exists a (rather theoretical) possibility of poisonous divisional created by procedural reasons. If the priority discloses the same invention(s), and is validly claimed at the time of publication of the parent application, but is lost later in respect of the divisional (for instance for non-filing of a translation under R.53(3), then the parent should be novelty-destroying - unless the EBoA decides that parent and divisionals are linked such that they cannot ever be prior art for one another.

David Holland said...

In some cases a simple "no" to question 1 could cause an increase in complexity - where once there was a single priority date, each claim could be split into any number of separate parts. Each part may have a different position for both novelty and inventive step. In fast moving fields it is not unusual to have 10 or more priority documents, so there is potential for a considerable increase in complexity. That potential is already there to some extent under the current test, but I think this will be increased if the Board say "no" to question 1. Whether any increase in complexity is a problem is a different matter.

Dave said...

Tim - I am not sure that there would be uncertainty about the scope of the partial priority - priority would extend to what is disclosed in the priority document, and no further. An intervening disclosure could destroy novelty if it discloses anything within the generic claim, but outside what is disclosed in the priority document.

Anonymous said...

Let's see what would happen if the answer to question 1 is "no".

P1 discloses copper.
P2 discloses metal, preferably copper.
The application discloses metal, preferably copper, and claims metal.

D1 is published between P2 and the application. It discloses metal.

If the answer to question 1 is "no", then P1 is the "first" application for the part copper of metal.
Therefore P2 is not the first application for the part copper.
The "remaining part" is "metal minus copper". But P2 does not disclose "metal but not copper". The claim to metal therefore does not have priority from P2 at all (read the order of G 2/98).

As a result, D1 is prior art under 54(2) in so far as "metal but not copper" is claimed.
Arguably, that part of the claim is still new over D1, assuming D1 does not state that the metal is not copper. However, it will quite likely not be inventive to start from D1 and choose a metal that is not (pure) copper. So the claim lacks inventive step.

Note that dropping the priority claim to P1 will not work. P1 remains the first application and therefore fatally wounds the validity of P2 as priority document.


If, on the other hand, the strict approach to multiple/partial priority is maintained, P1 will not play any role for the question whether the claim to metal has priority. That claim will enjoy priority from P2 and therefore be protected from D1.

The big point here is this: there is a system behind G 2/98. Breaking one small part of that system just for the purpose of detoxicating poisonous divisionals breaks the whole system. Not a good idea.

Tim Jackson said...

Anon, please see my more detailed response to your similar post on the IPKat.

If the answer to Q2 is 'no', then there's no need to consider the remaining part "metal minus copper". That's arguably an alternative subject matter under point 6.7 of G 2/98, but point 6.7 will have been overturned.

Apart from point 6.7, the basic system of G 2/98 is not broken by my approach. As I explained on the IPKat, I'm just looking at what subject matters the documents actually disclose and claim, and the extent to which they disclose them. There's no need to consider hypothetical subject matter like "metal minus copper". In accordance with G 2/98, 'copper' is the same invention as 'copper'. And 'metal' is the same invention as 'metal'.

Dave said...

I agree with you that the first question is not particularly well phrased, and does not seem to go to the heart of the issue, which is what date should be assigned to the genus minus the species under these circumstances?

There is one argument that says that [genus-species] has no date at all if a disclaimer is not provided in the later document, because there is no explicit basis for [genus-species]. Proponents of this argument cite G 2/98.

There is another argument that says there should be no need for an explicit disclaimer to the species for [genus-species] to get the date of the first document in which the species is disclosed (for the particular case of partial priority). Proponents of this argument tend to cite the legislative intent of Article 88(2) EPC in the form of the FCPI memorandum.

I sit firmly in the latter camp. Any solution that requires attorneys to draft specifications with a bunch of boiler plate disclaimers is self-evidently daft in my opinion. The latter argument may not be consistent with G 2/98, but that is the purpose of the referral in my opinion.

I do not agree that fixing poisonous priority/divisionals will somehow "break the whole system".

There is a handy comparison of the consequences of the two approaches in the submissions at page 8 of this document (from the point of view of an attorney), with which I broadly concur:

To borrow their phrase (from the same document): "That is not the way the patent system was intended to be."

Anonymous said...

I sit firmly in the latter camp. Any solution that requires attorneys to draft specifications with a bunch of boiler plate disclaimers is self-evidently daft in my opinion. The latter argument may not be consistent with G 2/98, but that is the purpose of the referral in my opinion.

The position that divisionals should not be poisonous is not in itself inconsistent with G 2/98:
- if we allow G 1/03 disclaimers, the problem can be worked around relatively easily in most cases. It is G 2/10 that prevents this from working (by stating that G 1/03 does not apply to undisclosed disclaimers of disclosed subject-matter).
- if we adopt the "rule of logic" that a disclosure of a genus and of a species also discloses the genus minus the species, then partial priorities would work to overcome poisonous divisionals even with the strictest interpretation of G 2/98 (since that rule ensures that the required disclaimers are disclosed disclaimers). Again, G 2/10 prevents this from working.
- even with a strict interpretation of G 2/98 and G 2/10, there is nothing to stop the EBA from interpreting Art. 54(3) in a way that removes poisonous divisionals. (In my view, the rationale of G 1/03 should lead the way here.)

Regarding question 1, I think it would have been better had it not given a definition of "generic OR-claim". G 2/98 states that partial/multiple priorities apply to OR-claims. What we need to find out are the precise conditions for a claim to be an OR-claim. Anyway, I would answer that a "generic OR-claim" is not always an "OR-claim".

My answer to questions 2-4: the alternative subject-matters need to be individually disclosed in the application as filed. Each alternative subject-matter may have its own priority date (or the filing date).

My answer to question 5: subject-matter disclosed in a first EP with a particular date and occurring in a second EP with the same date may not be cited against the first EP under 54(3). Justification: as stated in the reasons of G 1/03, 54(3) is intended to ensure that a patent on (a part of) an invention is granted only to the first person that disclosed it, not to prevent a patent on (a part of) the invention from being granted at all. So if the appellant is the first to apply for the species and the first to apply for the genus (or at least was not later than another person that filed for the species and/or the genus), he is entitled to get protection on the genus including the species.