No (cross) product liability

I am not sure I have ever seen a bioinformatics patent lawsuit in France before the case reported on today: this may well be a first.

It is therefore particularly interesting to see how our judges grappled with such an exciting and complex topic. And the short answer is: pretty well it would seem!

The Codexis group is a leader in the field of biocatalysts. In particular, Codexis Mayflower Holdings LLC owns European patent No. EP 1761879, filed in June 2005 and claiming a priority of June 2004. The patent was granted in August 2013 and was not opposed.

Claim 1 of the patent is the following (the wording which will be important for the discussion below has been emphasized):

A computer-implemented method for identifying amino acid residues for variation in a protein variant library in order to affect a desired activity, said method comprising:
(a) receiving data characterizing a training set of a protein variant library, wherein the data provides activity and sequence information for each protein variant in the training set;
(b) from the data, developing a sequence-activity model that predicts activity as a function of amino acid residue type and corresponding position in a protein sequence,
wherein the sequence-activity model includes one or more non-linear terms, each representing an interaction between two or more amino acid residues in the protein sequence,
and wherein the sequence-activity model can distinguish amino acid residues that have a significant impact on the desired activity from those that do not; and
(c) using the sequence-activity model to identify one or more amino acid residues at specific positions that are predicted to impact the desired activity for variation to impact the desired activity,
(d) wherein at least one of the non-linear terms is a cross-product term comprising a product of one variable representing the presence of one interacting residue and another variable representing the presence of another interacting residue, and
(e) wherein developing said sequence-activity model comprises selecting one or more cross-product terms from a group of potential cross-product terms, wherein the selected cross-product terms are those cross-product terms representing true structural interactions that have a significant impact on activity.

Unusually, the main defendant is an individual, and even more unusually, a university Professor, Mr. O.

Mr. O happens to teach biochemistry, molecular biology and bioinformatics in Nantes; he was blamed by Codexis for his personal website offering a tool for predicting protein sequences, called ProSAR. Furthermore, Mr. O is a vice-president of the company Peaccel, which provides services to biotech and pharma companies, and which uses the ProSAR software.

The issue, as you have probably guessed, is that Codexis deemed that the ProSAR software infringes its EP’879 patent.

In 2015, Codexis had an internet bailiff’s report, and then an infringement seizure at the professor’s home (!) carried out. The source code for ProSAR was seized and placed under seal. Codexis then formally initiated infringement proceedings against Mr. O and his company. The defendants filed a nullity counterclaim.

In 2016, an expert was appointed by the judge in charge of case management to analyze the source code and provide a comparison with the patent claims. The expertise was concluded in a matter of months.

In 2018, the Paris TGI issued its decision on the merits, rejecting both the nullity counterclaim and the infringement main claim.

Codexis appealed, Mr. O and Peaccel counter-appealed, which now leads us to the judgment rendered by the Paris Cour d’appel on January 15, 2021. This second judgment fully confirmed the first instance decision.

Starting with the validity discussion, one first item of contention was whether the priority claim was valid.

Indeed, Codexis’ inventors had originally filed a U.S. provisional application in 2002, followed by three successive continuation-in-part applications CIP1, CIP2 and CIP3 in 2003 and 2004. The EP’879 claims priority to the third one, CIP3.

Whenever patent attorneys see “continuation-in-part” and “European priority claim” in a same sentence, they smell blood in the water.

And indeed, the infringement defendants argued that CIP3 is not the first application for the claimed invention, as the first application is rather CIP2. As a result, they said, the priority is invalid, since only a “first application” can give rise to a priority right under article 87 EPC.

This argumentation must sound perfectly clear to EQE candidates, but it may not be an easy objection to deal with for a court of law. However, in this case, the court nicely set out the test to be applied:

It must therefore be first determined whether the subject-matter of the main claim 1 of the EP’879 patent and of dependent claims 2, 3, 7, 10 and 12 can be directly and unambiguously derived by the skilled person from the teaching of application CIP2, or from only the parts of application CIP3 not present in application CIP2. 

Then, the court noted that the patentee did not dispute that features (a) to (d) were directly and unambiguously derivable from CIP2. On the other hand, they did not believe that feature (e) could be derived from the passages cited by the defendants. As a result, CIP3 was acknowledged as the first application for the invention, and the priority was found valid. Too bad for the defendants, as the application CIP2 itself was published between the priority date and filing date of the patent.

Mr. O and Peaccel further raised objections of lack of novelty based on two articles published in 2001.

The first article, “W et al.“, apparently disclosed a method similar to that of claim 1, but applied to peptides, and not proteins as required by the claim.

Let’s take a step back to molecular biology 101: peptides and proteins (also referred to as polypeptides) both designate polymers comprising amino acid residues. But the term “peptide” generally refers to a short polymer, whereas a “protein” is a long polymer. Paragraph [0024] of the patent mentions a “typical” minimum number of amino acid residues of 30, 50 or 100 in a protein. In W et al., only three amino acids were present in the analyzed peptides.

The defendants insisted that the allegedly infringing software ProSAR works on both peptides and proteins, and that the internet bailiff’s report and expertise proceedings were actually conducted based on a test peptide of only ten amino acid residues, but this was considered irrelevant to the issue of novelty by the court.

From a peptide to a protein… to a living organism? Would the modelling still work then?

As to the defendants’ argumentation based on the second article , “L. et al.“, it was found to be so lacking that the court did not even bother to address it in detail:

The object of this publication differs from that of the EP’879 patent since it does not disclose a computer-implemented method to identify amino acid residues for variation in a protein variant library in order to affect a desired activity, but a method for rationally designing a medicament, […] as not contradicted by the very partial translation of the L et al. article filed [by the defendants]. [They] unsuccessfully attempted to combine various excerpts from incomplete sentences […] [so that] it is not necessary to reply in detail to this technical argumentation. 

Next, inventive step.

Starting from the first article W et al. as the closest prior art, Mr. O argued that the disclosed process was obvious to adapt from short peptides to actual proteins. The court was not convinced, as the proposed secondary reference related to a different process of protein engineering without features d) and e) of claim 1.

A second inventive step challenge also starting from a document directed to peptide engineering failed for similar reasons.

The patent was thus upheld. Let’s now turn to the issue of infringement.

Mr. O first argued that the analysis of the software relied upon by the plaintiff was based on a ten-amino acid test peptide – and thus not a protein. However, the court rejected the argument, since the software clearly works similarly with peptides and proteins. Squeeze-type arguments do not always work, and in this case the peptide/protein squeeze raised by the defendants left the judges unimpressed.

But another defense hit the mark, both in first instance and on appeal. Features d) and e) of claim 1 make reference to “a cross-product term comprising a product of one variable representing the presence of one interacting residue and another variable representing the presence of another interacting residue”In the ProSAR tool, a different calculation is performed, based on quadratic, term-to-term products.

Codexis’ technical expert acknowledged that there is a well-accepted mathematical definition of “cross-product” (“produit vectoriel” in French) but then submitted that a broader interpretation of this expression should be adopted in view of the description of the patent, which would cover any non-linear term expressing the interaction of two residues in the polypeptide. The court did not agree that a definition of cross-product different from the conventional one could be found in the patent.

The identification of this difference between ProSAR and claim 1 of the patent was not offset by other contextual arguments, such as allegedly incriminating statements made by Mr. O that he had been inspired by articles published by Codexis. The identified difference was sufficient to conclude that there was no literal infringement.

Codexis had another shot, based on the doctrine of equivalents. They claimed that the quadratic terms in the ProSAR software are equivalent to the cross product of EP’879.

Again, the court was unsympathetic to this view:

[…] Therefore, the equation of step 6 of the expert report and the one of paragraph [0101] of the description of the patent are neither identical, nor mathematically equivalent, and it can thus not be stated […] that the ProSAR tool is identical to the cross-product of the patent in terms of function and effect. 

Thus, it is not demonstrated by Codexis that the selection of quadratic terms implemented in the ProSAR tool fulfils the same function as the selection of terms of the cross-product in the patented method, namely the identification of interactions between acid amino residues which have an impact on activity, in order to achieve a same result, namely predicting the activity of new variants. The expert report does not confirm […] that the sole purpose of the genetic algorithm implemented in the ProSAR tool is to allow an efficient selection of non linear terms. 

It is slightly unfortunate that the judgment does not contain a more detailed discussion on this last aspect. Assessing infringement by equivalence in France requires determining what the function of the allegedly equivalent means is, but this determination is seldom straightforward. In the present case, based on the judgment itself, it is not easy to understand what the exact respective roles of the term-to-term product and the cross-product are in the process – and why.

Other than that, the quality of this ruling seems quite remarkable, given the high complexity of the technical field.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 2, January 15, 2021, Codexis Mayflower Holdings LLC & Codexis Inc. v. Bernard O. & SASU Peaccel, RG No. 18/15295.

Follow-up on priority and on SPCs

Dear readers, this is just a brief follow-up post on two topics previously addressed on this blog: partial priority at the EPO and vaccine SPCs.

First, partial priority at the EPO. This was already addressed in the past here and especially there, where I talked about the decision of the Enlarged Board of Appeal G 1/15.

Since then, another decision T 282/12 has been issued and has swiftly been presented on all good blogs (here, here and there).

In this decision, it was ruled that the priority of a claim was partially invalid because the alleged priority document was partially not the first application for the invention at stake.

As I have previously observed, although G 1/15 was almost unanimously welcome by the patent profession as a cure to the toxic divisional plague, the relatively flexible and generous approach of partial priority adopted in this ruling can also turn against patent proprietors when they file successive similar applications.

In this respect, T 282/12 is not really groundbreaking. The same already happened in T 1222/11, the decision which was the first one to theorize the “generous approach” later endorsed by G 1/15. In this earlier decision, the refusal of the patent application at stake was confirmed by the Board due to the invalidity of a priority claim in view of an earlier application (by the same applicant) which contained the same examples as the alleged priority document. I always thought that it was somewhat paradoxical that this decision considered as life-saving by many in fact killed the patent application at stake.

There is one remaining issue which may give rise to additional discussions, though.

T 282/12 states that the priority is only partially, and not fully, invalid if part of the claimed subject-matter was disclosed by the same applicant in an earlier application than the priority document. T 1222/11 was in my opinion not so clear in this respect. However, is it really certain that this is consistent with the Paris convention and the EPC? After all, these treaties do not expressly contain the notion of a “partial first application“.

So, it remains to be seen whether future decisions will be fully in line with this aspect of T 282/12 or not. It also remains to be seen what national courts will make of all this, as they are not bound by the Enlarged Board’s findings – least of all French courts if I may say so.

In the meantime, extreme caution should be exerted when filing successive applications on similar subject-matter, especially when the supporting examples are the same. 

Second topic, totally unrelated to the first one: vaccine SPCs.

Almost two years ago, Lionel Vial reported on this blog on the refusal of an SPC application filed by GlaxoSmithKline Biologicals (GSK) for the Cervarix vaccine by the INPI, and on the confirmation of this refusal by the Paris Cour d’appel.

Interestingly, another French SPC application was filed by a different applicant, namely the Loyola University of Chicago, still for the Cervarix vaccine, and based on the same marketing authorization as the GSK application.

The same causes often produce the same effects. Thus, this second SPC application was also refused by the INPI, and the appeal filed by Loyola was dismissed by the Paris Cour d’appel.

As explained by Lionel in the earlier post, the Cour d’appel considered that the active substance in the Cervarix vaccine was in fact the same product as the active substance in the earlier Gardasil vaccine, for which an SPC had already been granted to GSK.

The Cour d’appel did not change its mind in the Loyola case and reminded that only one SPC can be granted per product. The fact that the patent mentioned in the SPC application as well as the applicant were different did not change anything.

To Loyola’s credit, whether both active substances are actually the same is not straightforward here. This is because one critical protein in the Cervarix vaccine is obtained differently (via insect cells rather than yeast cells), and is truncated, relative to the same protein in the Gardasil vaccine. Therefore, it was probably worth giving it another try despite the previous negative decision.

An interesting variation of the insect pictured in the earlier Cervarix post.

Loyola made ample reference to its own patent and to a later scientific publication as evidence that the difference in protein structure had an impact on biological properties.

But the court said:

[…] The INPI rightly states that this change is minor […]. Even though the appellant claims a different structure and different properties, they do not show that these modifications are anything but minor, as the active substance remains the same and the preventive purpose remains the same. The INPI rightly states that an increase in the capacity to form VLPs, a higher yield, a higher purity level, a more regular shape, a reduction in the risk of cellular DNA encapsidation or even a better stability, are changes which do not alter the nature of the active substance or its preventive purpose; they do not make it possible to conclude that the products are different. 

So, once again, insects and yeast – same difference.


CASE REFERENCE: T 282/12, (Coated tablets / JOHNSON & JOHNSON), Board of Appeal 3.3.07, November 9, 2017, Pfizer Inc. v. Johnson & Johnson Consumer Inc.

CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, December 19, 2017, Loyola University of Chicago v. Directeur Général de l’INPI, RG No. 2016/17848.

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.