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Tuesday, 7 May 2013

Poisonous priority – how many ways can a patent be toxic?


Several members of the IPKat team have been captivated by the recent case of Nestec SA & Ors v Dualit Ltd & Ors [2013] EWHC 923 (Pat) (22 April 2013), another masterful judgment from Mr Justice Arnold (206 paragraphs, since you ask - rather concise considering the large number of points at issue).  This case concerns Nespresso coffee makers and their attendant capsules, and is packed with interesting legal points, several of which merit consideration.  Merpel suggests that readers watch out for further posts.  This moggy wishes for the time being to focus on the first and third of the judgment’s conclusions:

i) the Patent is not entitled to priority from the Priority Document;
iii) claims 1, 2, 7 and 8 lack novelty over the Priority Document.

First, a little background. As the judgment records:
The Claimants (collectively “Nestec”) are respectively the owner, exclusive licensee and alleged exclusive sub-licensee of European Patent (UK) No 2 103 236 (“the Patent”). Nestec allege that the First and Second Defendants (collectively “Dualit”) have infringed European Patent (UK) No 2 103 236 (“the Patent”) by supplying coffee capsules which are compatible with Nestec’s Nespresso coffee machines. Dualit deny infringement and counterclaim for revocation.

The patent was directed towards a system including both the coffee maker and the capsule, whereas Dualit had only sold capsules, and the aspect of the case with which this post does not concern itself is whether Dualit had committed any act of infringement at all (spoiler – they had not, according to Arnold J).

What got this Kat’s whiskers twitching however was the finding of invalidity over the Priority Document, European Patent Application No. 03015776 filed on 10 July 2003 which was subsequently published as No. 1 495 702 A1.  This Kat recently noted a series of cases where several patents were revoked because of a finding of an invalid priority claim and consequent invalidity over intervening prior art.  The present case goes one better – the prior art was the publication of the priority application itself.

The finding of lack of priority was as a consequence of the broadening of the terms of the claim between the priority document and the application as filed, with the result that claim 1 of the patent covered some possibilities that were not present in the priority document.  Arnold J considered that this meant that the claim as a whole was not entitled to priority.  He referred to the law on partial priority:

In the present case, there is an issue as to partial priority. This was explained by Kitchin J in Novartis AG v Johnson & Johnson Medical Ltd [2009] EWHC 1671 (Pat) at [122] as follows, having cited a passage from G2/98:
“I discern from this passage that the EPO considers it is permissible to afford different priority dates to different parts of a patent claim where those parts represent a limited number of clearly defined alternative subject-matters and those alternative subject-matters have been disclosed (and are enabled) by different priority documents. Further, this principle applies even if the claim has adopted a generic term to describe and encompass those alternatives. I do not detect anything in the decisions of the Court of Appeal in Pharmacia and Unilin Beheer which is inconsistent with this approach and in my judgment is one which this court should adopt.”
Arnold J stated “I do not consider that such arrangements [those covered by claim 1 but not in the priority document] are clearly defined alternatives to the other arrangements covered by claim 1.”  He therefore found the priority claim invalid.

However, the priority application was itself published, and was therefore taken to be part of the state of the art pursuant to section 2(3) of the Patents Act 1977 (corresponding to Article 54(3) EPC – novelty-only prior art effect of post-published patent applications having an earlier priority date).  Arnold J recorded the submissions of the parties and his conclusion as follows:
Nestec contends that the claims cannot simultaneously lack priority from, and be anticipated by, the Priority Document. Counsel for Nestec did not dispute, however, that in principle such a result was legally possible.  Nor did he dispute that the Priority Document disclosed arrangements having all the features of the relevant claims. Rather, he argued that it followed that the claims were entitled to priority. As counsel for Dualit pointed out, however, the claims are broader than the disclosure of the Priority Document. Thus they can, and in my judgment do, lack novelty over the disclosure of the Priority Document even though they are not entitled to priority from it.

Now, readers of the CIPA Journal will recall a pair of articles last year on the cognate subject of “Poisonous Divisionals”.  In the February 2012 issue of the CIPA Journal, Malcolm Lawrence and Marc Wilkinson  argued that in a pair of applications in a parent/divisional family, priority-entitled subject matter in one case can be novelty-destroying prior art against a priority-non-entitled claim in the other case.  There is relatively little case-law for this proposition, but EPO Board of Appeal case T680/08 did find such a situation for a priority application and patent claiming priority from it – exactly analogous to the present case.  In T680/08, however, the patent was saved by a disclaimer to the terminal point of a range.  In the present case, there was no saving amendment.

In the March 2012 CIPA Journal, Peter Arrowsmith and Tom Faulkner published “An antidote to poisonous division(al)s?”, arguing that in principle the claim should be divisible into the priority-entitled part, where the other application was not prior art, and the priority-non-entitled part, that would not be anticipated because the disclosure was not present in the priority document.  Arnold J’s analysis suggests that this analysis only applies where there are clearly defined alternatives.  However, many commentators including this Kat are troubled by the restriction of the possibility of multiple priorities for a single claim (which is explicitly provided for in the law) to the situation of clearly defined alternatives.  The apparent concession that “such a result [invalidity over its own priority document] is legally possible” may not be the correct approach.

It is surprising that this is still an open question.  The only perfect way to avoid the problem is not to amend a case between the priority and final filing; it can be mitigated by not allowing the priority application to publish and then not filing divisionals.  But this greatly reduces the usefulness of these two beneficial procedural possibilities.  Is it reasonable that the priority and divisional procedures should be able to combine with such lethal effect?

32 comments:

Anonymous said...

Recent EPO decision T 1222/11 takes a difffent stance on what "clearly defined alternative" means:

"The present Board is however of the opinion as explained below that the condition "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" should be given, when read in its proper context, a different meaning than that attributed to it by the respective Boards in the above mentioned decisions T 1877/08, T 0476/09, T 1443/05 and T 1127/00. As a preliminary remark, this condition cannot be meant to set out the manner in which the subject-matter of the "OR"-claim must be defined, i.e. to give "rise to the claiming of a limited number of clearly defined alternative subject-matters" as this would, at least in relation to generic terms, be at variance with the disclosure test based on the principle of an unambiguous and direct disclosure set out in opinion G 3/89 (OJ EPO, 1993, 117)...

Therefore, in the context of assessing which elements of the "OR"-claim are covered by any of the multiple priority documents, the words "gives rise to the claiming of a limited number of clearly defined alternative subject-matters" refer to the ability to conceptually identify by said comparison a limited number of clearly defined alternative subject-matters to which the multiple rights of priority claimed can be attributed or not...

is therefore concluded that in so far as a subject-matter disclosed in a priority document and encompassed by an "OR"-claim of a European application (i.e. a claim of a European application which compared to the disclosure of the subject-matter in the priority document has been broadened) is concerned, the decision on whether priority can be acknowledged for this subject-matter, i.e. for this embodiment covered by the "OR"-claim, is independent of whether said subject-matter or embodiment disclosed in the priority document is identified in the "OR"-claim of the European application as a separate alternative embodiment. The above conclusion, however, 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."

Ben Hoyle said...

As you state, it is interesting to see several recent cases in the UK courts focus some light on the murkier aspects of priority. Unfortunately, most of the priority claims in question have not stood up to the scrutiny. Practitioners should take note.

These problems are also compounded as global prosecution becomes more fragmented. For example, it becomes harder to control the course between priority and final filings.

A good tip would be to include a broader independent claim in the priority application, maybe skulking near the end of a claim set in a US-style, e.g. in addition to a set of core claims for search. Even if such a claim is subsequently limited and/or deleted, it might support a broad range of narrower claims in a subsequent filing.

Anonymous said...

I have absolutely no sympathy with the patentee, who need to find themselves some better patent attorneys.

Regarding the final comment, there is more than one way to to avoid this problem, just as their is more than one way to skin a dead cat.

Anonymous said...

The most lethal type of prior art comes from the inventors themselves.

Anonymous said...

I see coloured figures in the judgement. Now that courts can make use of coloured figures then why can't patent offices around the world? May I please, through this IPKat blog, request the patent offices around the world to kindly start accepting coloured figures for patent applications as well. After all, certain concepts are better explained through coloured figures.

Tufty the Cat said...

T 1496/11 is the first one I have come across that confirms the poisonous divisionals hypothesis. Claim 1 was found to be not novel over a divisional because it was not entitled to priority.

Mr Bumble said...

Anticipated by your own priority document? "If the law supposes that.. the law is a ass - a idiot". Meticulous verbal analysis, anyone?

Tufty the Cat said...

Here is a little post I have just done on the hypothesis being confirmed. Bad news for a lot of applications, I suspect.

MaxDrei said...

Thanks Tufty for the Link. But did you intend 1149/11. Is it not 1496/11 that we should read?

Tufty the Cat said...

Well spotted MD. My post has been corrected, and also updated with a few links to other places where the same EPO decision has been mentioned.

Joeri Beetz said...

This reminds me of a similar (fictitious) case presented in the EQE paper C exam of 2007. In that case, they made it slightly more complex by introducing a first application issue, but the principle issue was the same.

The priority claim of the to be opposed patent looked OK, while an even earlier application of the same applicant already described a very narrow embodiment of that claim. According to the exam committee, priority was lost and the publication of the even earlier document was novelty destroying. In my opinion, the exam committee was wrong and I am glad that judge Arnold seems to agree with me.

Novelty and priority are entirely different issues. You can only get priority (or lose it due to first application issues) for exactly the same subject-matter as described earlier. A broader or more narrow claim can only effectively claim priority if the original description provides clear and unambiguous support for the changes made to the claim.

The consequence of a broadened claim thus is that your assumed priority document can be novelty destroying. To be save, a patent claiming priority should always include at least one claim that is an exact copy from the priority document. Ben Hoyle's suggestion to add a very broad claim to your priority filing does not help. Such a broad claim would only give priority to the same broad (probably not novel) claim later on, not to a narrower not yet clearly described embodiment.

Anonymous said...

Joeri, I would accept your argument if the content of the earliest filing were to be disclaimed. T1222/11 referred to above however came to the conclusion that such a disclaimer would add subject matter.
EdT

Anonymous said...

Joeri- as anonymous above suggests T1222/11 concerned such a situation.

Arnold only agrees with you for claims which don't cover clear alternative subject matters. For example I suspect a claim to a metallic element would be entitled to partial priority to an earlier claim to iron whatever interpretation you take of G2/98.

Personally I don't see how a bar on claiming priority for boarder claims makes any sense.

Its well accepted that if a priority document discloses X but not Y that a later claim to "X or Y" is entitled to partial priority, having priority for the "X" part of the claim but not for the "Y" part of the claim.

Imagine instead that the priority document contains the specific example X but not the generic Z which includes X.

A claim to "X or other Z" would then not be entitled to priory for"other Z" but would be entitled to priority for the "X" part of the claim . Given that "Z" and "X or other Z" are identical in scope and two different ways of writing the same thing what sense does it make for a claim written "X or other Z" to be allowed partial priority but one written "Z" denied partial priority?

Training said...

Might be a silly question from a new trainee but...how do you prevent publication of the priority application? Surely a copy of the priority application always appears in the file history of the priority claiming application. Isn't this, then, a publication?

Darren Smyth said...

Good question from Training. The publication as part of the file history has effect only from the date of the actual publication. The Article 54(3) prior art effect, where it is deemed to form part of the state of the art for novelty only from its filing date, requires it to have been published as a European patent application. This can be prevented by withdrawing the patent application before technical preparations for publication are complete.

MaxDrei said...

Further comment for Training.

The poison is released when one files a divisional and it goes to A publication. In the worst case, the A publn of the div kills the parent and the A of the parent kills the Claims of the div.

Just don't ever file a div and you should be OK. But, if you have filed a div, and it has already gone to A publication, be afraid, be very afraid, of such self-collision.

The EPO thinks divs are a plague. Now it has invented a good way to deter folks from filing them.

Anonymous said...

Perhaps the danger of introducing a broader claim 1 in the priority claiming application relative to claim 1 of the priority document could be mitigated by ensuring that the scope of claim 1 of the priority document can be exactly replicated via a sub-claim and the added subject-matter can be captured via one or more alternative sub-claims. So where the priority document claims iron and the priority-claiming application claims a metallic element, claim 2 could specify "wherein the metallic element is iron" and claim 3 could specify "wherein the metallic element is one of P, Q and R", and P, Q and R are what has been added to the disclosure relative to the priority document. This is a proposed alternative to Ben Hoyle's suggestion.

Joeri Beetz said...

From G2/98: "The use of a generic term or formula in a claim for which multiple priorities are claimed in
accordance with Article 88(2), second sentence, EPC 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."
The question then is what 'a limited number' and 'clearly defined' exactly mean. For the genus 'metal', this may already be a problem.

The main problem, however, is that this question only arises when you actually need the priority claim. Priority is only relevant when there is harmful prior art. So even if claiming metal would give you partial priority for iron, you can only get a claim granted for iron if you are allowed to amend the claim in such a way that it only covers iron. Unfortunately, that is not possible when your application only mentions 'metal'.

Conclusion: when drafting a claim that is (or might be) broader than the embodiments disclosed in the priority document, make sure that you also explicitly mention the narrow examples. Otherwise you will end up with big problems.

Walter Hart said...

All the inventor did, was to invent something and subsequently improve the invention. In response to the improvement, the court strips him of all his rights. This is incredibly unjust and the entire patent community should fight against this unjust way of handling priority until the last man standing.

MaxDrei said...

Mr Hart perhaps you could expand on that lament, for I do not yet see any injustice.

You say there is a basic invention and an improvement. The claim to the basic invention is entitled to the prio date, the claim to the improvement not. But suppose the improvement is novel relative to the disclosure in the priority document. Then the prio doc fails as a 54(3) attack on the claim to the improvement. Each invention gets the filing date it deserves.

We are not concerned here with the USA, where earlier unpublished filings can serve as obviousness attacks. Not so under the EPC. But you know that though, don't you?

I do not see where in Europe the injustice lies. Please tell us more of your problem.

Walter Hart said...

There is not "a claim to the invention and a claim to the improvement." There is only a single claim which covers both the original (priority) invention and the improvement, because the improvement is a broadening of the invention.

However, the improvement is such that the broadened claim can not clearly be divided into a part with priority and a part without priority. This can happen because at drafting of the priority claim, the improvement could not have been foreseen.

As a result, under this doctrine the inventor loses his rights. The loss of rights is the consequence of the improvement and the subsequent broadening of the claim.

MaxDrei said...

Well thanks Walter Hart. I see now that the "improvement" you contemplate is one that was unforeseeable at the priority date but is manifested in a change to the wording of the claim, to widen it. Well, yes, under Art 54(3) EPC, less than competent drafting of definitions of what the invention is are punished very harshly.

The rest of the world agrees with you. It takes the view that the standard of competence that the EPC imposes on patent attorneys is indeed unfairly high. Do you think that what the world needs is less competent patent attorneys?

Art 69 EPC strikes a balance between "fair" protection for inventors and "reasonable" legal certainty for the public. I think it gets the balance right. You, I take it think not. Yes?

Anonymous said...

Max, many attorneys are more than incompetent enough without lowering the standard even more! I'm tired of whinging attorneys bemoaning the unreasonableness of the EPO, when it is their own ineptitude that causes the majority of problems.

Walter Hart said...

First, Art 69 relates to scope of protection, not to validity, so I do not see the relevance of the comment relating to Art. 69 in a discussion on validity.

As to the topic, inventions are often improved in the priority year. Often, these are broadening improvements. The inventor realizes that the invention can also be carried out in another way.

Is the inventor entitled to protection to the broadening improvement? I think so. Should he be required to give up any rights as a result of the improvement ? That would be punishing an achievement.

According to this verdict a broad protection becomes impossible if claim 1 cannot be broadened in such a way that two separate parts can be distinguished. This happens quite regularly, especially in mechanics.

The occurrence of this problem is actually quite independent from the quality of drafting of claim 1 of the priority application. Even if claim 1 is drafted quite well, a broadening of claim 1 in two distinguishable parts may be very difficult or impossible to do. Try it, and you may loose everything, as has happened here. But not to try means giving up protection of the broadening improvement, protection that may have been well deserved.

The most commonly applied solution is simply to withdraw the priority application before publication. Although it generally works, this solution means that the inventor has to give up a right (the priority application) because he has improved his invention. That is his “reward’ for improving his invention.

Moreover, it does not prevent claim 1 from losing the complete priority if the two parts – with and without priority - cannot be distinguished.

The priority system is simply not equipped to properly handle broadening improvements in the priority year. However, the very essence of innovation is that these improving steps occur. Therefore, we need to rethink priority and the unreasonable punishment of inventors as a result of G2/98.

MaxDrei said...

@ Walter Hart, I do not accept that "doing it another way" is the same as broadening the definition of the invention. Rather, it is just a different embodiment of the inventive concept ("it") you should have claimed at the start of the priority year. As your client's patent attorney, you should have perceived the concept at the priority date, and then announced it in the priority document. Then (of course) your client is likely to generate further embodiments of "it" during the Paris year. At the end of the year, you claim the concept and each embodiment gets one or more dependent Claims. Some of those dependent Claims get the priority date, others not.

Or else your Client makes a second invention during the year. For that, you file a new priority application, taking care to Claim with novelty over the earlier inventive concept.

No injustice so far.

I know, drafting the priority document claim perfectly is not easy. But that's why it is hard to qualify as a patent attorney.

Anonymous said...

I agree with Walter.

A similar scenario is set out in Memorandum C (http://www.dvarim.fr/law-practice/Memorandum.pdf) which G2/98 refers to in its decision. Part (a) on pages 2-4 is particularly instructive as to why Arnold's decision is in fact incorrect.

Again, it is worth noting that T 1222/11 addresses what is meant by the term "clearly defined alternatives". It will be interesting to see whether the EPO follows this line of reasoning since it clearly removes the problems with poisonous divisionals. Indeed, one might wonder whether the decision was drafted with that in mind, since the Board's reasoning was not essential to the case.

Walter Hart said...

Improvements form the essence of innovation and are unpredictable by nature. An inventor may find that a feature he initially considered essential and explained as such to his patent attorney, is non-essential after all. He may develop another vision on the invention without actually changing it. Also, another embodiment based on the exact same innovative concept may be found. A different light may be shed on the invention by the prior art mentioned in the search report of the priority application.

Also, many SME’s who invent something, file an application and build a prototype. They start marketing their invention based on the prototype. During the priority year the prototype may be improved. These things and others may happen in the priority year.

A patent attorney can and should try to get the broadest protection on the basis of the invention as it is explained to him and his own technical and legal skills. But according to Niels Bohr making predictions is extremely difficult, especially when they relate to the future. A patent attorney cannot predict future improvements. If the inventor explains with solid arguments why a feature is essential and should be in claim 1, and perhaps should be coupled to another specific feature in claim 1, it is not always bad drafting to draft claim 1 in that way. If the invention is modified in some illogical way during the priority year but still uses the same inventive concept, that is not always the fault of the patent attorney.

Have you never withdrawn a priority application for fear that it might destroy a subsequent application or filed a national priority application for fear that, if filed as a European priority application, it might destroy a subsequent European application if published? If you have, your arguments go against your own practice. The truth is that many priority applications in Europe, national or European, are withdrawn prior to publication. Many European patent attorneys never file a European priority application but mainly file national priority applications for fear of losing rights. Are these lousy applications written by bad patent attorneys who cannot draft a proper claim 1?

No. These are often good patent attorneys who understand that improvements can occur and that G2/98 juncto Art. 54(3) is dangerous for improvements. The system forces inventors to withdraw rights or file lesser rights because of improvements or the mere possibility of improvements in the priority year. Our priority system punishes improvements in the priority year. You either withdraw the first right, file it in a lesser way, or loose the subsequent right.

Creating another patent family for further improvements in the priority year may be great for patent attorneys, but doubles the costs for SME’s. Moreover, it is not always possible to be novel relative to the priority application without losing scope of protection or without taking at least some risk that the priority application is considered novelty destroying for the subsequent application after all. This occurs in particular if the improvement, new insight or redefinition of the invention is based on the same figures, i.e. if the inventor’s understanding of his invention has progressed. Things can become really messy if you try to formulate a claim 1 that is novel over the figures of the priority application but needs to be supported by the very same figures.

Was the harsh consequence of this verdict the intention of the priority system when it was created in the Paris Convention in 1883. I believe the intention was to create a priority system that helps the inventor. Moreover, according to the quid pro quo principle on which the patent system is based, an improvement should lead to more rights, not less.

This subject is complicated and I do not have all the answers. But we need a priority system that does not hurt an inventor who improves his invention in the priority year, because improvements are the essence of innovation.

Harm van der Heijden said...

As I understand it, Article 54(3) EPC is created to prevent an undesirable situation in which two different applicants filing an application for the same invention around the same time can both get a patent and are then in a position to block each other, so that the invention cannot be legally practiced by anyone.

If that is true, then clearly the poisonous priority situation is a case of collateral damage by A. 54(3) - after all, a co-pending application by the "same applicant" will normally not result in the deadlock situation that A. 54(3) strives to prevent.

Therefore, in my opinion A. 54(3) should be amended to exclude applications by the same applicant, or at the very least applications of which priority is claimed.

Anonymous said...

With apologies for coming to this late - I was intrigued by Walter Hart's comment above that "Art 69 relates to scope of protection, not to validity, so I do not see the relevance of the comment relating to Art. 69 in a discussion on validity." I'm more familiar with UK law, and was surprised on actually checking Art 69 that it does indeed appear to say that. However, Section 125 of the PA77, which is one of the sections supposed to have the same effect as the corresponding part of the EPC, says that it is defining the term "invention", so it affects not only the scope of protection but also the requirements of validity, for example Section 1 which requires that "the invention" be new, inventive, etc.

I'd always understood the scope of protection and novelty to be intimately related, the test for wheter something is a novelty citation essentially being whether it would infringe if done later. Indeed, I seem to remember a court case (not sure which, unfortunately) in which the court applied one test as at least a guide as to how it should apply the other. This is also the basis of the "Gillette defence" - "We're only doing what we were doing publicly before, so if it infringes your patent then your patent is invalid".

Anonymous said...

" MaxDrei said...
Further comment for Training.

The poison is released when one files a divisional and it goes to A publication. In the worst case, the A publn of the div kills the parent and the A of the parent kills the Claims of the div."

Could you please explain in more detail this case? By the parent application you mean the priority claiming application or the priority application itself?.

Thanks,

MaxDrei said...

Let's leave this thread, shal we, and all go to the more recent one on the same subject.

Anon, I mean this sequence:

You file an application. 12 months later you file PCT declaring priority. 18 months later, you enter the EPO. That entry is what I call the "parent".

Then you file at the EPO a divisional. That is what I call the divisional.

Suppose that no claim of the parent or div is entitled to the prio date. In that case, the WO publn of the PCT terminates the divisional. The EPO A publication of the div kills the parent. OK?

Peter said...

Inspired by Walter's comment "Have you never ... filed a national priority application for fear that, if filed as a European priority application, it might destroy a subsequent European application if published?" I'd like to raise this issue now that we are going to have the European patent with unitary protection.

To me it seems that a national priority application will thereafter not be a safe heaven, since the national priority application could be nationally
novelty destroying prior art. Thus,
If the unitary patent is revoked
for lack of novelty under Art54(3) [or similar national law], it most likely should be revoked in all member states. This is not the case presently.

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