Clarifying priority

Pharma cases are among the most complex of patent cases. Take the zoledronic acid infringement and nullity litigation for instance. No sooner than two weeks ago, I reported on a creative preliminary objection defense raised by the manufacturer Sanochemia Pharmazutika AG – which was rejected by the Paris Tribunal de grande instance (TGI), with a confirmation on appeal.

At the end of the post, I said that the case was worth watching for further developments, and that the decision reported on was just an amuse-bouche. Well, after the amuse-bouche, we now have a starter to feed on. For the main course, i.e. the judgment on the merits, we will have to wait a little bit longer.

Patent pending on an tray configured for accommodating amuse-bouche.

As always, a few words of context should be helpful.

The Novartis group owns European patent No. EP 1296689 on a further therapeutic indication of the drug zoledronic acid, for the treatment of osteoporosis. According to Novartis, their drug Aclasta® is covered by this patent. The Teva group on the one hand and Biogaran on the other hand hold marketing authorizations for a generic version of Aclasta®.

In January 2014, Novartis initiated proceedings against Teva alleging infringement of the EP’689 patent. In March 2014, Biogaran filed a nullity action in relation with this patent. Finally, in December 2014 and January 2015, Novartis initiated proceedings against Biogaran and two other companies alleging again infringement of the EP’689 patent. All of these proceedings have now been linked together in front of the TGI.

The validity of a divisional patent, EP 1591122, was later also challenged by Biogaran. Turns out this divisional patent is currently undergoing opposition proceedings at the EPO. The patent was maintained in amended form in first instance, and the outcome of the appeal should be known any time soon (more on this aspect below).

The French trial date was initially set on April 26, 2017, but the parties agreed to a postponement to Q1 2018, i.e. after the decision of the Board of appeal.

Meanwhile, motions were filed both by Teva and Biogaran in front of the judge in charge of case management. These motions gave rise to two parallel orders dated June 8, 2017, which I am reporting on today.

The issue raised by these motions is the following. The EP’689 patent, and therefore also the divisional EP’122 patent, are based on a PCT application filed on June 18, 2001, claiming priority from two U.S. applications of June 20, 2000 and February 9, 2001 respectively. It seems that the validity of the priority claims may be critical for the validity of the patent. I assume that this is because relevant prior art was published between the priority date and the filing date of the PCT.

Both priority applications were filed in the name of the inventors, as was mandatory at the time under U.S. law. But the PCT application was filed in the name of Novartis AG for all designated states except Austria, where the applicant is a local Novartis company.

In such a (common) situation, it is a frequent line of attack by nullity claimants to question the entitlement of the applicant(s) of the subsequent application to claim priority.

This line of attack is based on the wording of article 4.A.1 of the Paris Convention:

Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.

Article 87(1) EPC contains a similar provision. It is established case law that, when the applicant of the subsequent filing is not the same as the applicant of the first filing, a valid transfer of the right to claim priority to the first filing must have taken place before the date of the subsequent filing. Otherwise, the priority claim is invalid.

In the present case, Biogaran and Teva challenged that the inventors and original applicants have properly transferred the right to claim priority to the original filings to Novartis AG (the applicant for France in the PCT filing). They therefore deemed that the priority is invalid.

Novartis of course maintained that the priority was validly claimed and offered some justifications without however providing all of the underlying agreements.

As a consequence, Biogaran and Teva requested that Novartis should be ordered to supply copies of these underlying agreements. This encompasses the employment agreements of the three inventors, as well as relevant agreements between different entities of the Novartis group. The inventors themselves should be ordered to supply copies of their employment agreements to Novartis, to the extent that this would be necessary, asked Biogaran and Teva.

As could be expected, Novartis requested that the judge in charge of case management should reject these requests.

Based on the two orders issued on June 8, 2017, the judge was apparently quite sensitive to the arguments developed by the nullity claimants. At the very least, the judge noted that serious doubts have been raised regarding the entitlement of Novartis AG to claim priority to the two U.S. applications.

Let’s have a closer look at the arguments. Quoting from the Biogaran order:

For Biogaran, there is no evidence that the inventors held the rights that they allegedly assigned to Novartis on the day of the alleged assignment of May 2, 2001. 

As far as I understand from this passage, there was an alleged assignment from the inventors to Novartis AG before the filing date, but the question was whether the inventors still held the rights on the invention (and thus the right to claim priority) on that date.

The judge further explained:

Biogaran states that in many countries, and notably in the U.S., Switzerland and France, the right of the employer to claim inventions made by employees in the course of their employment agreement derives from the law or from the employment agreement. 

Regarding the Swiss inventor Trechsel who is said to reside in Switzerland, in the country of the applicant Novartis AG, Biogaran mentions that his employer is the Swiss company Novartis Pharma AG. 

They state that the employer of the inventors Richardson and Horowitz who reside in the USA was Novartis Pharmaceuticals Corporation and that therefore their employment was regulated under U.S. law and that it is necessary to determine if Horowitz and Richardson, according to the applicable U.S. law, assigned their invention (including the right to claim priority) to their employer. 

We thus have the complex picture of a multinational team of inventors having two different employers, both of which are different from the company that filed the PCT application.

Novartis, on the other hand, denied that any challenge against the entitlement to priority can be validly raised by third parties to the relevant agreements, such as Biogaran and Teva.

On the merits, Novartis’ response relied on an affidavit of a manager, who explained that there was a general policy in the Novartis group to the effect that Novartis AG was the applicant of all PCT applications, so that the rights on this invention were necessarily assigned to this company.

Here is what the judge had to say in this respect:

However, even if this affidavit makes it possible to understand that the wish of the Novartis group was that Novartis AG should own all the patents of the group, it does not provide any indication on the fate of an employee’s invention with respect to his direct employer. 

Novartis does not clearly explain the status of the three inventors and even more so does not provide the court with any information in order to make sure that at the time of filing the U.S. applications or between these U.S. applications and the assignment to Novartis AG of May 2, 2001, they indeed owned the inventions, and these had not been assigned to their respective employers due to their agreements or under U.S. or Swiss law. 

It is important for Novartis AG to take a position on this issue by supporting its argumentation on any useful communications. Therefore, the case management judge invites their counsel under article 765 of the Code de procédure civile to do this as further stated in the order below. Nevertheless, at present the judge does not have to specifically issue an order regarding the three employment agreements, the existence of which is not proven, and which at any rate are supposed to have been executed by third parties to the present litigation; nor regarding the other evidence requested by Biogaran. 

The court will rule on the merits in view of the arguments and evidence provided by the parties, on the admissibility […] of a challenge of the priorities and, if necessary, on Novartis AG’s right to claim priority in its patent application to the U.S. applications […]. 

As a result, the judge refused to issue any specific orders for the production of documents. But on the other hand she did invite Novartis to provide further information and evidence.

This looks like a mixed outcome. On the one hand, the nullity claimants (infringement defendants) did not get the specific orders that they requested. This is not very surprising as French judges are traditionally reluctant to issue such orders unless relatively strict conditions are met, especially when third parties are involved. Discovery is definitely not a part of French legal culture.

On the other hand, the patentee was explicitly invited to provide further information and evidence, which may mean that their case is currently viewed as incomplete and thus weak.

Clarifying the priority has thus been flagged a priority by the judge.

Another important step for this lawsuit was certainly the oral proceedings concerning the divisional patent which took place on September 13 and 14, 2017 in front of Board of appeal 3.3.01. That’s case T 0239/16.

If any reader has information on the outcome of these oral proceedings, you are more than welcome to post a comment. At the time I am drafting this post, there is no news on the EPO website.

The outcome of these oral proceedings will be most interesting for two reasons. First, the Board’s decision will necessarily impact the French litigation. Especially if the divisional patent is revoked.

Second, priority has also been (quite understandably) discussed in depth in front of the Board. Quite frankly I did not have the courage to really delve into the thick file wrapper. The link is here. But based on the communication issued by the Board on June 9, 2017, it seems that priority is the big topic.

According to the Board’s rapporteur, first, the validity of the priority claim has to be assessed in terms of claimed subject-matter (under G 2/98). Second, if the priority holds after this assessment, entitlement to priority must be discussed. A complex legal discussion can be expected, especially on the key and preliminary issue of whether the EPO has the power at all to decide on the legal entitlement to the right of priority. In fact, the rapporteur seems to have some sympathy with Novartis’ arguments in this connection, according to the above communication.

The issues raised in the Board’s communication are too complex to be addressed here. In fact, one of Novartis’ requests is a referral to the Enlarged Board of Appeal.

Again, I look forward to hearing about what actually happened in Munich last week.

And at any rate, this is definitely a case to keep on the watch list.

CASE REFERENCES: Tribunal de grande instance de Paris, 3ème chambre 4ème section, ordonnance du juge de la mise en état, June 8, 2017, Novartis AG et al. v. Teva BV et al., RG No. 14/01134. Tribunal de grande instance de Paris, 3ème chambre 4ème section, ordonnance du juge de la mise en état, June 8, 2017, Biogaran SAS v. Novartis AG et al., RG No. 16/10894.

Poisonous thoughts

It has already been more than a week since the latest Enlarged Board of Appeal’s decision G 1/15 has been published. It has therefore already been reported and commented on in all good blogs, so that there is probably no need for me to repeat what other have already explained very well.

It will be sufficient to remind readers that the decision provides important guidance on the issue of partial priority (especially with respect to so-called “OR-claims“) and puts an end to the doctrine of “poisonous divisional applications“.

Basically, if a claim in an application or patent encompasses subject-matter which was disclosed in the application to which priority is claimed, but is broader than said disclosed subject-matter, the priority is not fully invalid. The part of the claim which was disclosed in the priority document benefits from the priority, and the other, new, part of the claim does not. G 1/15 makes it clear that no conditions or limitations apply in this respect.

With that in mind, I do have a couple of thoughts on this topic that I might as well share in this post. Actually, both thoughts are not so much about what the decision says as about what it does not say.

The first remark relates to the Enlarged Board’s reasoning. The theory of poisonous divisional applications was originally adopted in a number of decisions from the Boards of appeal. These decisions relied on the following sentence in the founding decision G 2/98 on the assessment of priority claims:

The use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2) EPC, second sentence, is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject matters.

This sentence was interpreted by a number of boards as imposing a limitation to the possibility to divide a claimed subject-matter into different parts having different effective dates. This was also the respondent’s position in the referral. The argument was well summarized in the submission of the president of the EPO. And in item 3 of the reasons of G 1/15, it is acknowledged that “the divergence that has emerged in the case law has been caused by the proviso in point 6.7 of the Reasons of G 2/98“.

Therefore, I am somewhat disappointed that the Enlarged Board did not really address the question of what was meant by this sentence in G 2/98. In the core of G 1/15, the Enlarged Board analyzed the EPC, the Paris Convention, the Travaux préparatoires and some authors’ opinions, and came to the conclusion that there can be no condition or limitation restricting partial priority. This is all fine and well, but the sentence in G 2/98 was simply left out of the picture. So, does G 1/15 represent a change in case law relative to point 6.7 of the reasons of G 2/98? Or was the Enlarged Board unable to figure out what was originally meant in G 2/98? After all the sentence explicitly mentioned a proviso, which does strongly suggest a condition or limitation.

So, it seems to me that there is a little bit of a lack of transparency here.

The second remark is more practical than theoretical – and therefore probably more interesting than the first one.

In one of my previous posts, I reviewed decision T 1222/11 in detail. This was the first decision which extensively discussed the theory of poisonous divisional applications and came to the conclusion that the theory was incorrect. The reasoning was that partial priority can always be acknowledged if a claim is broader than the disclosure of the priority document. This is the so-called “conceptual approach” which has now been endorsed by the Enlarged Board in G 1/15.

In this previous post, I noted that the line of thought of T 1222/11 may also have side effects which go beyond the issue of partial priority. More particularly, the issue is related with the question of what is a first application, for the purpose of assessing priority. So, now seems like a good time to revisit this question again.

Quite remarkably, in T 1222/11 the refusal of the patent application at stake was confirmed due to an invalidity of the priority claim. This has always striken me as paradoxical, since this decision was widely acclaimed in the patent profession as being an antidote to the nefarious theory of poisonous divisional applications adopted in earlier decisions (as well as in several national court rulings).

G 1/15 basically states that the principles set out in T 1222/11 were the right ones. Although it does not address the particulars of this earlier case, there is every reason to assume that T 1222/11 was also correct in that it concluded that the priority claim at stake was invalid.

One last sip of poison for the road?

In T 1222/11, the claimed subject-matter was properly disclosed in the priority document. But part of it was also disclosed in an even earlier application by the same applicant, called D4b. In other terms, the teaching of the priority document (and of the claimed subject-matter) corresponded to a generalization relative to document D4b. In particular, some examples of D4b were found by the Board to fall within the claimed subject-matter. Although the claim at stake mentioned a property (namely a buffering capacity) which was not recited in D4b, the Board concluded that the same property was necessarily achieved in D4b. Also, the fact that D4b was limited to the use of a combination of two components (malic acid and lactic acid), whereas the priority document and the claimed invention were not, was found to be irrelevant.

The overall conclusion was that D4b was the actual first application for the claimed subject-matter, and not the priority document. As a result, the priority was invalid, and the claimed subject-matter lacked novelty over D4b. No disclaimer was allowable because D4b became full prior art due to the invalidity of the priority claim.

Therefore, G 1/15 has fully disarmed opponents or nullity claimants. Although poisonous divisional applications may no longer be a legal weapon, what we coud call “poisonous prior applications” (of the D4b sort in T 1222/11) have perhaps become more powerful weapons.

Let’s simplify the question one step further. Let’s assume a first application A1, a subsequent application A2 and an even later application A3 by the same applicant.

A3 claims subject-matter S, which is properly disclosed in A2. On the other hand, A1 does not disclose S but only part of S, which we can call s.

For instance, s can be a process involving a certain temperature range, and S can be a similar process involving a broader temperature range. Or s can be a composition comprising components A, B and C, while S can be a similar composition comprising components A and B.

If you had asked me the question a few years ago, I would probably have taken the view that, in such instances, the first application for subject-matter S is A2 and not A1. Just like, for consistency reasons, and under the EPO’s “gold standard“, the disclosure of s cannot be a proper support for claiming S (for the purpose of the assessment of Art. 123(2)).

This view is actually consistent with what is stated in the EPO case law bible (Case Law of the Boards of Appeal of the European Patent Office, 8th edition, II.D.4.1, 1st paragraph).

However, a side effect of the generous view of partial priority adopted in T 1222/11 and now endorsed in G 1/15, seems to be that this view is not correct, and that the first application is such a case is in fact… A1.

Applicants will therefore need to be careful about this, especially if they file successive applications containing the same examples but claiming different aspects of the same technology. Or else, some form of poisoning will come back to haunt them. 

Now, here is a challenging idea: could some form of partial priority be acknowledged in the context of a “not-the-first-application” argument? In other terms, if A1 discloses S1, A2 discloses S2, and A3 claims S1 or S2 (while claiming the priority of A2 only), is the priority claim fully invalid, because A2 is not the first application at all? Or does the priority claim remain valid as far as S2 is concerned?

Based on T 1222/11, I would tend to answer that the priority is fully invalid. Unless some supplementary condition needs to be examined, such as the fact that a limited number of clearly defined alternative subject-matters are claimed? Just kidding.

CASE REFERENCE: Enlarged Board of Appeal, November 29, 2016, G 1/15, Clariant Produkte (Deutschland) GmbH v. Infineum USA L.P.

French courts getting their priorities straight

Everyone in France is familiar with the sportswear and sports equipment retail store chain Decathlon. Well it looks like Decathlon has been running a real litigation marathon for a number of years due to a patent dispute with Time Sport International.

A number of decisions in this judicial saga have been published over the years, and the latest installment was issued two months ago by none less than the supreme court for most patent matters in France, i.e. the Cour de cassation.

In terms of context, it may be sufficient to mention that Decathlon was found guilty of infringement of European patent No. EP 0682885 to Time Sport International. Decathlon’s counterclaim for invalidity of the patent failed.

The priority of the patent was an important aspect of the validity challenge. The point of law raised by Decathlon in front of the cassation judges was precisely related with this particular aspect. The judgment thus provides an opportunity to look at whether the assessment of priority is similar or not in France and at the EPO.

Here is a short answer for readers reluctant to go through the details of the case: yes, the Cour de cassation endorsed the same standard for assessing priority as the EPO.

Claim 1 of the European patent at stake was mainly based on claims 1 and 9 of the French priority document. But the defendants argued that there were still significant differences, so that the subject-matter of the European patent was not the same as that of the French priority (and that the priority was invalid).

Here is claim 1 of the European patent (as maintained in amended form after opposition):

Device for the adjustable occipital fixing of a helmet, notably a helmet for a cyclist and more particularly for a mountain bike enthusiast, comprising a shell designed to fit on the skull of the cyclist and straps fixed to the lateral walls of this shell and connected on each side at a single point equipped with a removable connecting means for rapid hooking and unhooking, comprising a platen, fixed to and articulated with respect to the rear edge of the shell of the helmet, an occipital bearing block and at least one occipital strap, fixed to this occipital bearing block and the platen, the occipital strap being connected to the lateral straps and to the removable connecting means for rapid hooking and unhooking such that, upon the hooking of removable connecting means, the occipital strap provides a traction on the occipital block which is thus pushed against the bottom occipital portion under the occiput without any removal possibility.

In claim 1 of the priority document, reference was made not just to a platen, but to a housing for accommodating the platen. It was also specified that the platen was made of two elements, one fixed to the helmet and another one articulated relative to the first one with means for connecting an occipital bearing block and at least one occipital strap fixed to the second element.

Several features were thus deleted in claim 1 of the European patent, relative to the priority document, and the debate focused on this deletion.

Here is the ideal helmet (and complete outfit) for all “mountain bike enthusiasts” as the patent puts it.

Decisions from the Cour de cassation are a notoriously difficult read. So, let’s hold our horses and digest it step by step.

There were six reasons set forth by Decathlon why the judgment by the Cour d’appel was erroneous on the priority issue.

First reason: the appeal judges distorted the content of the European patent when they noted that claim 1 of the European patent was substantially identical with claims 1 and 9 of the priority document, whereas claim 1 of the European patent does not mention the housing and the two platen elements.

This first reason was quickly dismissed because the appeal judges did not state that European claim 1 was identical with the combination of French claims 1 and 9, but rather stated that it was substantially identical.

Second reason: the appeal judges erroneously reasoned in terms of obviousness for the skilled person instead of assessing whether the claim at stake was directly and unambiguously derivable from the priority document. In particular, according to the appeal decision, the claimed device without any mention of a housing or of a two-part platen “could obviously be contemplated by the skilled person, without any technical effort” and does not presuppose any “inventive step” relative to the teaching of the priority document.

The Cour de cassation agreed that the proper test was:

whether the skilled person can, based on common general knowledge, directly and unambiguously deduce the subject-matter of the claim from the prior application considered as a whole. 

Great news, this is the same test as the one applied at the EPO! The court deemed that this test was properly stated and applied by the appeal judges. The above mentions of obviousness or of the absence of any inventive step in the appeal judgment were admittedly erroneous but they were superfluous and therefore did not justify setting aside the judgment.

Third and fourth reasons: the appeal judges did not perform the required analysis, because they noted that the invention as presented in the priority document could be found in the description and in claims 2 or 9 of the European patent. This is irrelevant, and they should have examined only the subject-matter of claim 1 of the European patent instead.

Again, the Cour de cassation focused on the correct application of the right test by the Cour d’appel and disregarded the superfluous (and, I assume, erroneous) statements challenged in the third and fourth reasons of the cassation appeal.

Fifth reason: when features are deleted in a claim relative to the priority document, it should be examined whether the deleted features were or were not presented as essential in the priority document. This analysis was not properly made by the Cour d’appel, as in particular the Cour d’appel did not address the fact that the deleted features were in the characterizing portion of claim 1 of the priority document.

The Cour de cassation agreed that the omission of essential features from a priority document results in the invalidity of the priority claim. But the court deferred to the appeal judges regarding the factual determination of whether the same essential features are protected in the priority document and in the European patent. Under French law, an appeal judgment does not necessarily have to address all details of the parties’ argumentation. In this case, it is irrelevant that the appeal judges did not comment on the presence of the features at stake in the characterizing portion of claim 1 of the priority document.

Sixth (and last) reason: no distinction should be made between features related to the function and effect of the invention and features unrelated to those, in the priority analysis. The Cour d’appel did make such a distinction as they noted that the housing feature was “devoid of technical effect” and was therefore not an essential feature.

According to the cassation ruling, the statement made by the Cour d’appel was legitimate. It simply showed that “the omission or inclusion of [the housing feature] was irrelevant for the assessment of the priority claim“.

In summary:

  • The Cour d’appel, approved by the Cour de cassation, applied the “golden standard” of the EPO (see G 2/98) for the assessment of priority, i.e. examined whether the claimed invention was directly and unambiguously derivable from the contents of the priority document as a whole, by the skilled person relying on common general knowledge.
  • In particular, when an essential feature is deleted from the main claim, relative to the priority document, the relevant question is whether the deleted feature was presented as essential in the priority document.
  • The Cour d’appel made a number of erroneous statements in the judgment, but was forgiven for doing so, because such statements were superfluous and the proper standard was nevertheless applied.

It would of course have been interesting if a Board of appeal had had the opportunity to assess the validity of the priority claim as well for this case: we would then have had a chance to check whether the standard would have been applied in the same way.

In fact the European patent was opposed, which gave rise to appeal decision T 552/02, but the priority issue was not discussed in it.

One last interesting fact though: the patent was revoked in first instance by the opposition division. Then, the proprietor missed the deadline for filing the statement of grounds of appeal. However, the Board granted the restitutio in integrum requested by the proprietor – and set aside the decision of the opposition division. So, that was a very close shave indeed. If Time Sport International had lost its patent in the opposition, the French Cour de cassation would have missed a chance to get its priorities right.

CASE REFERENCE: Cour de cassation, chambre commerciale, November 22, 2016, Décathlon France v. Time Sport International et al., Appeal No. E 15-16.647.

One K.O. for Kao

As a present to priority nerds, and probably a punishment to others, here is another post on the burning issue of partial priority.

In a previous post, I attempted to provide some practical tips to patent drafters anxious about the outcome of the referral to the Enlarged Board of Appeal on the issue of poisonous (or toxic, whichever you like best) divisionals. As was recalled in this post, the issue boils down to how partial priority is assessed: under what we could call a “broad” or “generous” interpretation of partial priority, any generalized claim can partly benefit from the priority of a partial original disclosure, and thus be immune to anticipation by any poisonous divisional, poisonous parent or any other poisonous you-name-it family member; if, however, one believes that partial priority requires certain specific conditions in order to be acknowledged (let’s call this the “narrow” or “strict” interpretation), then generalized claims which do not pass the test (whatever it is) may be prone to some kind of incestuous anticipation.

Several boards of appeal adopted the strict interpretation of partial priority, whereas Board 3.3.07 preferred the broad and generous interpretation, notably in decision T 1222/11. This is the divergence in case law which led to the referral to the Enlarged Board.

Today, I would like to focus on this decision T 1222/11 in more detail: not so much on the (very interesting) obiter part of the ruling where the Board discusses in detail why they believe the strict interpretation put forward by other boards is wrong; but rather on the rest of the decision, which should not be ignored and is very informative indeed.

Oh – and did I forget to mention it? In this ex parte case T 1222/11, the patent application died in the end. It did not die because of a toxic divisional though, as Board 3.3.07 does not believe in toxic divisionals – and as this was not an issue anyway. But it died all right, and because of an invalid priority claim.

With this in mind, is it possible that the broad and generous interpretation might not be so generous after all with applicants and patent proprietors? At any rate it is certainly worth having a closer look at what exactly went wrong in T 1222/11 for the applicant Kao Corporation, and how they were unfortunately K.O.-ed.

In the case at hand, the application claimed the priority of a Japanese patent application, and the text of the application as filed was identical to the English translation of this Japanese patent application (reasons, 7).

But there was also an earlier PCT application by the same applicant, D4b, with a similar disclosure. In particular, D4b included several examples falling within the scope of the claims of the application at stake.

According to Kao, since D4b was only intermediate prior art under Article 54(3) EPC, it was possible to introduce a disclaimer into the main claim, more precisely a G 1/03-type undisclosed disclaimer, so as to restore novelty over D4b. Various formulations for the disclaimer were put forward as a main request and auxiliary requests.

This line of defense by the applicant was based on the presupposition that the priority claim of the application was valid.

If however the priority claim was in fact invalid, then D4b became full prior art under Article 54(2) EPC, as a result of which the introduction of an undisclosed disclaimer to restore novelty over D4b was no longer permitted, in view of the conditions set forth in G 1/03.

This is why the Board examined the validity of the priority claim, focusing on the fact that

According to Article 87(1) EPC, a requirement for enjoying a right of priority for filing a European patent application is that the application for a patent […] on the basis of which the priority is claimed must be the first application in respect of the same invention (reasons, 7).

The Board therefore compared the teaching of the priority document with that of the earlier application D4b by the same applicant. The Board explained that, if the earlier application D4b related to the same invention as the Japanese priority document, then said Japanese priority document could not be considered as a “first application” and thus the priority claim was invalid.

As a side note, the applicant could not possibly rely on the mechanism of Article 87(4) EPC, per which

a subsequent application in respect of the same subject-matter as a previous first application and filed in or for the same State shall be considered as the first application for the purposes of determining priority, provided that, at the date of filing the subsequent application, the previous application has been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority.

Indeed, D4b had been published and (if only for this reason) could not be considered as having been merely replaced by the later Japanese application.

Let’s now go back to the comparison between the priority document (substantially identical to the application at stake) and the earlier application D4b. The priority document, just like the claimed invention itself, was directed to a leave-on hair cosmetic composition containing an organic dicarboxylic acid (A) and an organic solvent (B), and further characterized by a certain pH and a certain buffering capacity. The Board first of all noted that 6 examples of compositions in D4b fell within the scope of claim 1 – these were the formulations that the applicant tried to exclude from the application at stake by way of a disclaimer. In addition, there were many more similarities between the priority document and D4b, including in terms of preferred components.

Only the buffering capacity was not explicitly recited in D4b, but for the Board, this parameter was simply a consequence of the other technical features present in D4b.

This finding meant that the priority document related to the same invention as D4b – and therefore the priority claim was invalid.

A patent attorney before and after application of a leave-on hair cosmetic composition
A patent attorney before and after application of a leave-on hair cosmetic composition

One aspect was more particularly discussed by the applicant, namely the fact that D4b was limited to the use of a combination of malic acid and lactic acid as component (A), whereas the priority document and the claimed invention were not.

According to the Board, this

does not mean that D4b  and the present application do not contain a common subject-matter or invention, but only means that the disclosure of D4b does not extend to the use of malic acid without any lactic acid. In other words, the present subject-matter can be seen as the invention of D4b supplemented with additional subject-matter relating to the use of malic acid without lactic acid (reasons, 9.4).

To put it differently, the priority document as well as the claimed invention were generalized relative to the subject-matter of the earlier application D4b.

But, despite such generalization, both the priority document / the application and D4b were found to relate to the same invention. This is made quite clear in the other following statements by the Board:

It follows from the above that the combination of features defined in positive terms in the first part of present claim 1 of the Main Request cannot be distinguished from the disclosure of the earlier application D4b. Example Products 10 to 14 and Example Product 6 of D4b constitute prior disclosures of the combination of features defined in positive terms in the first part of present claim 1 of the Main Request and therefore cannot be held to relate to a different subject-matter, i.e. a different invention (reasons, 9.2)

It must be concluded […] that the Appellants cannot benefit from the priority claimed for the combination of features defined in positive terms in amended claim 1, in so far as it covers subject-matter disclosed in D4b, in particular in so far as it covers the six compositions disclosed in D4b which the Appellants are seeking to disclaim (reasons, 10).

Further down in the decision, in the obiter dictum on partial priority, the Board explains that it is sufficient for the purpose of benefiting from partial priority if alternative subject-matters in a broad claim can be conceptually identified – a very undemanding requirement.

The Board further notes that this

also implies in view of the necessary coherence of rules of law on the subject of claiming priority defined in the EPC, that when an application on the basis of which a priority date is claimed encompasses a narrower subject-matter already disclosed by the same applicant in an earlier application, the decision on whether the claim to priority on the basis of the later application is valid does not depend on whether the narrower subject-matter disclosed in the earlier application is identified in said later application. The latter situation is precisely the one underlying the case under appeal (reasons, 11.8).

The bottom line of this rationale is that, when two successive applications are filed by a same applicant, the second one having a broader subject-matter than the first one, then the second application can never be used to claim priority for a (yet) subsequent filing – unless use is made of the special provisions of Article 87(4) EPC, i.e. the first application is nipped in the bud.

Logically, one should reach the opposite conclusion if the “narrow” interpretation of partial priority advocated by the other, poisonous divisionals-friendly boards, is used.

So, the “broad” interpretation may save a number of patents from the unpleasant agony of being poisoned by another member of their family; but it may also toll the bell for some applicants who like to file successive applications for relatively similar subject-matters, and possibly broaden the definition of their inventions over time, starting from specific examples.

Thus, whatever the outcome of the pending referral is, it seems that extreme caution will still be required for properly claiming priority.


CASE REFERENCE: Board of Appeal 3.3.07, T 1222/11, Kao Corporation, December 4, 2012

Poison and antidote

Poisonous or toxic divisionals have been a somewhat exotic but much commented upon topic, that has led to the revocation of a handful of patents in the past few years.

The excitement and dread generated in the European patent profession will culminate when the Enlarged Board of Appeal of the EPO, to which the topic has recently been referred, issues its decision G 1/15, probably within the next couple of years.

It looks like most, if not all, of the profession hopes that the Enlarged Board will put an end to a theory which is often viewed as nonsensical. I am not sure that I concur with this unanimity. But what everyone will agree on is that there is no predicting with absolute certainty what the Board will have to say on this subject.

So, since the world will not stop turning and patent applications will not stop being filed while we are all waiting for the verdict of the wise people in Munich, it may be worth looking for an antidote to the poison.

To put it more simply, today’s question is whether there is a way to immunize newly filed patent applications against a possible “poisonous divisional” objection further down the road, in case the Enlarged Board does not dispel this objection as being rubbish.

In order to answer this question, we need to look more closely at what the problem really is about. This is where the notion of “partial priority” comes into play.

Let’s assume a first application A, and a subsequent European application B claiming the priority of A. Let’s also assume that the invention claimed in B is broader than what was originally disclosed in A. For example A discloses a process with a temperature in the range of 10-100°C, whereas a broader range of 5-500°C is claimed in B. Or A discloses an apparatus comprising one part soldered to another part, whereas B claims the same apparatus wherein the two parts are attached to each other by any possible means.

In such scenarios, quite clearly, the B claims do not fully benefit from the priority of A, since B does not relate to the same “subject-matter” as A (in accordance with opinion G 2/98).  The tricky issue is whether the priority claim is fully invalid or whether it is only partially invalid.

If the priority is held fully invalid, and if A is a European patent application which gets to be published (in principle after the filing date of B), then A becomes prior art under art.54(3) EPC, i.e. prior art for the purposes of the assessment of novelty only (not inventive step). Therefore, if A discloses one or more embodiments falling within the scope of the B claims, these claims are invalid. We could call this a “toxic priority” situation.

Moreover, even if A itself is not prior art, for instance because it never gets published, or because it is not a European patent application, the existence of a divisional application C stemming from B can also be prejudicial to the novelty of B. Indeed, the part of C which does benefit from the priority of A can be opposed to B for the purposes of novelty only. In such as case, the divisional application is said to be toxic to the parent. But the reverse is also true, and the parent B could be toxic to its child C.

One solution which has been proposed to get out of this mess is the notion of partial priority.

If we accept that the claimed subject-matter in B can be divided up into two parts, a first part that benefits from the priority of A and a second part that does not benefit from the priority of A, then an argument can be made that:

  • said first part is immune to any toxicity because it benefits from the earliest filing date in the family; and
  • said second part is also immune, because it is not disclosed in A, so that there can be no anticipation by A (or any other application in the family validly claiming the priority of A).
Can a poison container safely be generalized to a beverage container without losing the priority for the poison embodiment?
Can a poison container safely be generalized to a beverage container without losing the priority for the poison embodiment?

Whether and to which extent partial priority can be conjured up is one of the main questions that the Enlarged Board of Appeal has to deal with in G 1/15 (see the referral decision T 557/13). In the founding opinion on priority G 2/98 it was mentioned that “the use of a generic term or formula in a claim for which multiple priorities are claimed […] is perfectly acceptable […] provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters”. There has been a debate as to what this exactly means, and whether this implies restrictions on the conditions under which partial priority in a generic claim can be acknowledged.

With all this in mind, and without being able to guess at the further guidance which the Enlarged Board will offer, it is reasonable to state that there is a risk of invalidation when a European application is filed:

  • which claims a priority,
  • which comprises claims that have been generalized relative to the teaching of the priority document,
  • if the priority document is a European patent application which gets to be published, or if one or more divisional applications are filed at any point of time.

But, oddly enough, there are instances in which more poison could lead to a cure.

In fact, one solution when the above risk is identified at the time of drafting a priority-claiming application consists in adding a fallback position containing a feature which is not disclosed at all in the priority document. Indeed, if the priority claim becomes invalid because of an added feature (as opposed to just because of a generalization), then there can be no anticipation by the priority document or by any parent or divisional application – since the added feature restores novelty over those. Ideally, the added feature should be minimal and not significantly affect the scope of protection. Remember: it is only necessary to restore novelty over a potential art.54(3) EPC disclosure, so inventive step is not at stake.

If we go back to the above examples, if A discloses a process with a temperature in the range of 10-100°C, and if this range needs to be broadened to 5-500°C in B, why not also add in B another innocuous feature not at all disclosed in A, at least in a dependent claim? For instance, we could add that the process is performed within a time frame of 1 minute to 100 hours, if this is relevant.

Or, if A discloses an apparatus comprising one part soldered to another part, and if the claims in B need to be broadened to all possible modes of attachment between the parts, why not also add in a dependent claim in B reciting that the apparatus weighs from 100 g to 100 kg, assuming this is a relevant range.

Thus, even if partial priority is denied for the generalized claim, it is always possible to rely on the fallback and decide to completely forget about priority and at the same time make sure that there can be no anticipation by A or any application claiming the priority of A.

This suggestion comes with two caveats, though.

The first caveat is that, in case any other relevant disclosure took place during the priority year, the complete loss of the priority date may not be an option. In that case, the only solution seems to go back to what was originally disclosed in the priority document A and stick to that.

The second caveat is that features to be added in the second filing B should be as innocuous as possible (in order not to significant restrict the scope of protection); but not completely meaningless. Indeed, meaningless limitations would not be enough to distinguish over an art.54(3) disclosure, bearing in mind that the disclosure has to be read and assessed by the skilled person. For instance, if A discloses an invention on a car, and if we decide to add in B that the car has four wheels, it is very possible that the skilled person will be deemed to understand the car of A as necessarily comprising four wheels, in which case we would be back to square one.

CASE REFERENCE: Board of Appeal 3.3.06, T 557/13, Infineum USA LP v. Clariant Produkte (Deutschland) GmbH, July 17, 2015