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

Red card for Orange

In a previous post, I gave an example of a French patent which was revoked because it was considered as not relating to an invention but to a mere discovery.

Still on the subject of patent eligibility, the same section of the Paris Tribunal de Grande Instance (TGI), chaired by the same presiding judge, Ms. Courboulay, confirmed their relatively harsh stance on this topic, this time in relation with a computer-implemented invention. The judgment was already reported on the Blog du droit européen des brevets but since it is really remarkable I thought it would be worth mentioning it here as well, just in case some readers missed it.

The telecommunications giant Orange brought an infringement action against its competitor Free, based on European patent No. EP 2044797. Unsurprisingly, Free filed a revocation counterclaim, and, as the title of this post suggests, Orange lost the case. Indeed, the court revoked all of the patent claims which were asserted by Orange.

Some of these claims were held invalid due to lack of novelty, but this is not the part of the decision which I would like to discuss. I would like to focus on claims 12, 13, 14 and 15.

Claim 12 read as follows:

Computer program product downloadable from a communication network and/or stored on a computer-readable medium and/or executable by a microprocessor of a mobile terminal (2) including means for detecting the radio field (160) of a base station (16) of a home local area network (150), said home local area network including one or more home equipments (11-14) connected to a home gateway (15), said mobile terminal (2) including means for exchanging data with said gateway via a radio link with the base station (16), characterized in that it includes program code instructions for sending to said home gateway (15), in response to detection of the radio field (160), information relating to the establishment of a multimedia session in progress between said mobile terminal (2) and an applicative system (20), and in that it further includes program code instructions for displaying a list of home equipments sent by the home gateway (15) and means for selecting at least one home equipment (11; 12; 13; 14) in said list.

The court was apparently not very happy with how this claim was drafted. They stated:

Article 52 EPC is perfectly clear and does not require any interpretation: programs for computers as such are excluded from patentability, and this is because they are protected by copyright.  

The emphasis on “as such” was put by the court, and the way I understand it, the expression was interpreted as meaning that programs for computers are “inherently” or “absolutely” excluded from patentability.

But, wait a minute, isn’t this understanding completely at odds with the position taken by the Boards of appeal of the EPO? After all, the Enlarged Board of Appeal, in its opinion G 3/08 on computer programs, stated that:

The present position of the case law is thus that […] a claim in the area of computer programs can avoid exclusion under Articles 52(2)(c) and (3) EPC merely by explicitly mentioning the use of a computer or a computer-readable storage medium (reasons, 10.13).

In other terms, according to the case law that the Enlarged Board endorsed, the wording “as such” in Article 52 means quite the opposite to what the TGI believes, i.e. it means that only pure computer programs can possibly be excluded from patentability, but any mention of a technical feature such as a computer or a storage medium is sufficient to escape exclusion from patentability. To make this easier to understand, the Enlarged Board made a comparison between computer programs and pictures (also excluded from patentability as such), which can be printed on a (patentable) physical support:

a claim to a computer implemented method or a computer program on a computer-readable storage medium will never fall within the exclusion of claimed subject-matter under Articles 52(2) and (3) EPC, just as a claim to a picture on a cup will also never fall under this exclusion.

The TGI was evidently well aware of the EPO case law on the issue but was unimpressed:

It cannot be validly argued, as the sole defense to deny nullity of these two claims, that the practice of the EPO is to admit claims to programs for computers by calling them ‘program-products’.

In fact, it cannot be accepted that a mere trick of language would make it possible to grant patents contra legem. Indeed, the grant of patents to computer programs, even if they are called program products, is not supported by any statute or by any difficulty of interpretation of the EPC, and on the contrary those are clearly excluded as such from patentability.

Claims 13 and 14 contained the same wording of “computer program product” as claim 12 and they were therefore smashed for the same reason.

As for claim 15, it was directed to a “storage medium storing the program according to any one of claims 12 to 14”, but the court found that this does not make any difference:

In this case, and in view of the way claim 15 of the EP’797 patent is drafted, it appears that the storage medium does not have any particular technical feature. It is again a dressing which does not make it possible to escape the exclusion from patentability which concerns computer programs. There is in fact no more information on this storage medium in the description of the patent, and Orange has obtained a protection and the consequent monopoly on an object the only function of which is to contain computer programs which are excluded from patentability.

Claim 15 was therefore canceled as well.

US5331499-1
A storage medium suitable for storing non-inventions.

Scathing comments in a ruling often add some spice to it, and Ms. Courboulay did not skimp on those. In this respect, her statement on the EPO’s contra legem practice of granting patents to computer program products is nothing short of astonishing. I will leave it up to the readership to decide for themselves whether the red card mentioned in the title of this post should in fact be shown to her court rather than to the claimant.

But beyond this parfum de scandale, applicants should keep in mind that, at least according to latest case law, claims directed to computer programs seem to be simply outlawed in France. Therefore, they should definitely include method claims in their French or European applications if they want the novelty and inventive step of their inventions to be assessed at all.

In view of the very firm stance taken by the court in Orange, I would not bet on any argumentation advocating the technical character of computer program inventions in front of the TGI.

As to the significant discrepancy between French case law and EPO practice, there are other striking examples (not just in the software field), and I will probably come back to this issue in future posts.


CASE REFERENCE: Tribunal de Grande Instance de Paris, 3ème chambre, 1ère section, SA Orange v. SAS Free & SAS Freebox, June 18, 2015, RG No. 14/05735.

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

Revocation out of thin air

Patent eligibility has been quite a hot topic in the U.S. since the Alice, Myriad and Mayo Supreme Court decisions. Whether a patent simply attempts to preempt an abstract idea or a law of nature or whether it is truly directed to an application of those – worthy of patent monopoly – is, as far as I can understand, the million-dollar question that everyone now has to struggle with on the other side of the Atlantic, and will have to struggle with in the foreseeable future.

Over here, on the Old Continent, things look pretty different, on the face of it. The EPO has set a low threshold for the so-called “technical character” requirement, actually such a low threshold that it is barely a threshold at all. Of course, this is not the end of the story, because “non-technical features as such, do not provide a technical contribution to the prior art and are thus ignored in assessing inventive step” as the November 2014, soon-to-be-revised Guidelines for examination nicely put it. So, inventive step can be a real challenge, but patent eligibility is at least one concern that applicants can forget about, right?

Well, we may have to think again, in view of a judgment from the Paris Tribunal de Grande Instance (TGI) of July 3, 2014.

This case is an action for revocation brought by a company named Evinerude against French patent No. FR 2822237 assigned to Aair Lichens. According to the first and only claim of the patent, the invention relates to the use of lichens exposed to sources of emission of chlorinated compounds, and used in the form of transplants or cultivars, for making quantitative measurements of polychlorodibenzodioxine (PCDD) or polychlorodibenzofurane (PCDF) compounds and evaluating their impact on the environment.

Indeed, it turns out that lichens are good indicators of the presence of PCDD and PCDF air pollutants. Thus, by measuring the amount of these chemicals in lichen samples, it is possible to evaluate the level of atmospheric pollution that they have been exposed to.

An elegant breathing device which could become handy in case of a polychlorodibenzodioxine or polychlorodibenzofurane leak.
An elegant breathing device which could become handy in case of a polychlorodibenzodioxine or polychlorodibenzofurane leak.

It looks like the PCDD and PCDF-loaded Parisian air was not favorable to Atlantic coast-based Aair Lichens, since the TGI revoked the patent based on Article L.611-10 of the Code de la Propriété Intellectuelle, which mirrors Article 52 of the European Patent Convention and provides a list of things which are not inventions, discoveries being the first item in the list.

The court started by recalling the long-standing principle that

A mere discovery cannot be patentable. Actually, the discovery preexists man’s intervention, whereas the invention is the result thereof. A discovery thus does not bring any novelty to the state of the art since it is at the stage of sheer knowledge. However, although the subject-matter of a discovery is not patentable, a practical application can give rise to the grant of a patent.

In this case, the invention relied on the discovery of a natural phenomenon, namely the absorption of PCDD and PCDF compounds present in the ambient air by lichens. The patent proprietor’s position was however that the patent was not directed to this discovery per se but rather to process steps of measuring the amounts of these chlorinated compounds in lichens and then evaluating their impact on the environment. But the court was not convinced, and replied as follows:

As it is drafted, the only claim of the patent does not protect the process steps but merely the statement that measurements can be made to evaluate the impact on the environment, which is not a process invention. The technical means for carrying out this statement could be protectable if they were described and claimed as such.

The patent was thus revoked.

To me, this looks more like a US-type approach than an EPO-type approach. After all, it seems that the court’s reasoning could be applied in a similar manner to many use claims which are routinely granted by the EPO.

An important caveat is that the patent at stake was somewhat light, with four pages of description and a single claim. It appears from the file wrapper that the application was drafted and prosecuted by the inventor himself, which is always risky. In fact, it is not every day that one comes across a claim starting with the words “the invention relates to”. The text does contain an example of measures performed in samples taken from various geographical areas, but there are no detailed explanations in the text on a possible process to be implemented. Also, the court noted that the skilled person, at the filing date, already knew that the pollution of a site by PCDDs and PCDFs results in atmospheric contamination, and that these compounds are easily absorbed by plants such as lichens [sic, I am not sure lichens can be considered as plants] so that these are good pollution indicators.

In other terms, one could infer from the court’s findings that the patent could also have been revoked for insufficiency of disclosure or lack of novelty or inventive step.

It is difficult to assess to what extent these flaws played a part in the TGI’s decision. Would the situation have been different if the patent had contained more technical information or if the prior art had been less relevant? It is certainly possible. But on the other hand, the way the claim was drafted did seem to play a critical part in the decision.

Therefore, when an invention relates to an application of a natural phenomenon, applicants would be well advised to draft at least some claims reciting the invention in terms of practical process steps and not just use claims broadly covering the basic concept of the invention.


CASE REFERENCE: Tribunal de Grande Instance de Paris, 3ème chambre, 1ère section, Evinerude SARL v. Philippe Giraudeau & SARL Aair Lichens, July 3, 2014, RG No. 10/14406.