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Wednesday, 10 July 2013

How Tufty’s Law detoxicates poisonous priority

It's not the coffee that kills;
it's the poisonous priority ...
In "Poisonous priority – how many ways can a patent be toxic?", back on 7 May, Darren the Kat initiated an enthusiastic discussion of a patent law concept hitherto unknown to this blogger, "poisonous priority", this issue being triggered by Darren's analysis of Mr Justice Arnold's Patents Court decision in the coffee capsule case, Nestec v Dualit. (here). Remarkably, Darren's post attracted over 30 comments from readers, most of them sensible (the comments, that is). But this was nothing compared to the 12 June post of Walter Hart and Reinier Wijnstra of EP & C (Rijswijk, The Netherlands). This post, "On poisonous priority: taking the debate further", did exactly that, recording a record 87 comments from readers. Not the least of the contributors to this ongoing debate was a former IPKat team member, the much-loved and much-missed Tufty. Today's post, at the invitation of the IPKat and again authored by Walter Hart and Reinier Wijnstra, pays tribute to Tufty's ongoing contribution to the debate, as this post's title bears witness.

Walter and Reinier write (nb for ease of reference, you can access the text of the European Patent Convention, or EPC, here):
Our posting “On poisonous priority: taking the debate further” raised the question whether it is fair and intended by the law makers that a priority application becomes a novelty-destroying prior right, if the subsequent application claims the invention in a different manner than in the priority application. This posting has attracted a record number of 87 replies, for which we are thankful. It would be a hard job to summarise and comment on all these comments. Luckily, this is not necessary, as a good solution to the problem at hand has emerged from this discussion. A solution with which we agree, which has been named “Tufty’s law”, and which is actually supported by at least one decision of a Board of Appeal  (T 1222/11). 
Tufty
Tufty the cat has introduced this law on his own blog, while discussing poisonous divisionals. He himself and other authors (including Peter Arrowsmith) have correctly pointed out that this solves the problem of poisonous priorities too. Tufty’s law holds that a broad claim of the subsequent application can theoretically be divided into two parts, one of which is entitled to priority and the other which is inevitably novel over the priority disclosure. 
How would this work in practice? Let’s take the example given by Bart van Wezenbeek. 
“Imagine that your invention has to do with a process using a metal, and you have the examples on iron (Fe) and gold (Au) in your priority application. Now some prior art has been found that discloses the same process with copper (Cu). Our 'smart' patent attorney limits his invention now to noble metals, thereby rescuing at least part of the invention. However, this would lack priority, which means that your own priority application with Au as example would destroy the novelty of your amended claim.” 
If the examiner applies Tufty’s Law, then the subsequent application is not destroyed at all. The claim of the subsequent application can be theoretically divided into two parts: gold, and noble metals not being gold. The claim part to gold has priority from the previous application. Accordingly, the previous application is not novelty-destroying against this part. The other part of claim 1 does not enjoy the right of priority, but gold does not anticipate “noble metals not being gold”.  Therefore, the claim to noble metals survives. Can we can hear Tufty purr? 
How about the legal basis for this? The whole problem of poisonous priorities started with G2/98, and it can also end there. G2/98 discusses under reasons 6.4 to 6.7 a memorandum drawn up by FICPI, the memo C. It concludes under 6.7: 
“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 words “limited number of clearly defined alternative subject-matters” have been interpreted by several Boards of Appeal and judges in the sense that the claim of the subsequent application itself must define this limited number of clearly defined alternative subject-matters. However, G2/98 itself does not mention this. Moreover, this interpretation is in conflict with the very memorandum that is used as a basis, as well as the very wording of the first part of this sentence: “a generic term of formula”.  Noble metal in the above example is a generic term. G2/98 does not state at all that one should literally claim “gold or a noble metal not being gold”, as some authors suggest. Quite the opposite: G2/98 clearly says that a generic term or formula is perfectly acceptable. 
The Enlarged Board of Appeal has given no explicit interpretation for the words “limited number of clearly defined alternative subject-matters” , so we can only speculate as to what  exactly was meant. However, the reasons and the memorandum do give guidance on what was not meant. In reason 6.4 of G2/98, the board concludes: 
“Thus, the memorandum can be said to express the legislative intent underlying Article 88(2), second sentence, EPC.” 
The Enlarged Board does not make any reservation with respect to the memorandum, so we may assume that the examples in this Memorandum are examples on how in the Board’s opinion one can claim a generic term or formula. There are three such examples, which have been mentioned in some of the comments to our initial post too:  (a) broadening of a chemical formula (example with halogens), (b) broadening of range (temperature, pressure, concentration, etc.), and (c) broadening  of field of use.“ 
The first example explicitly mentions the consequence of multiple priorities for one claim: 
“A first priority document discloses a relatively narrow chemical formula supported by representative examples. A second priority document discloses a broader chemical formula which within its scope includes the narrower chemical formula, and which is supported by additional examples justifying the broader formula. If multiple priorities for one and the same claim are allowed, it will suffice to draw up a single claim directed to the broad formula. This claim will then enjoy priority from the first priority date to the extent that the compound in question comes within the scope of the narrow formula, and the second priority for the rest of its scope.” 
 Let’s take a closer look at the third example, as it demonstrates nicely how one can make theoretical division of a claim in two parts, and it resembles the Nestec-Dualit case most. 
“Let us assume that a first priority document discloses a method of coating the inner wall of a pipe and that a second priority document discloses the use of the same method for coating the inner wall of bottles or any other hollow bodies. If multiple priorities for one and the same claim are allowed, it will suffice in the European patent application to draw up a claim to a method for coating the inner wall of hollow bodies. If multiple priorities for one and the same claim are not allowed, the applicant will have to draw up two parallel claims, one directed to a method of coating the inner wall of pipes, which claim will enjoy the first priority, and a second claim directed to a method of coating the inner wall of hollow bodies not being pipes, which claim would enjoy the second priority.” 
By now, we know what the authors of the memorandum did not know yet: multiple priorities for one and the same claim are allowed. As a consequence, it is not necessary to draw two claims, but one claim suffices. Moreover, this claim can theoretically be divided into two parts: one part covering a method of coating the inner wall of pipes, which part enjoys the first priority, and a second part covering a method of coating the inner wall of hollow bodies not being pipes, which part enjoys the second priority. 
We conclude that “claiming of a limited number of clearly defined alternative subject matters” does not mean that the actual claim of the subsequent application itself defines these subject matters. Rather, it suffices that the priority documents define these alternative subject matters. 
So what does the “provided…” of G2/98 then mean? Well, one could construe an example with many priorities, for instance six , all having a different claim 1, ending in a generic claim 1 having an inextricable mix of subject matters with their own priority dates. In such a case, legal certainty would be at stake, because it would become impossible to clearly divide the subject matter of claim 1 in a limited number of clearly defined alternatives, each having its own priority date. Such an example is not covered in the memo and may have been the concern of G2/98.
It is clear that several judges and Boards of Appeal look upon this matter in a different way. 
However, Tufty is not alone. In the discussion following our previous post, several authors have given their support to Tufty’s Law. Moreover, attention has been drawn to T 1222/11 which under reason 11.5 appears to support this interpretation too. Accordingly, we call upon the President of the EPO to refer a question to the Enlarged Board of Appeal to ensure uniform application of the law, and make Tufty’s law established EPO case law. We also call upon the United Kingdom Supreme Court not to wait for the EPO, but to completely assess priority on its own. 
We conclude that Tufty’s Law detoxicates the poisonous priority issues (and by the way the poisonous divisional issue). Having said that, the other solutions, such as a grace period, need no further attention. They may serve their own purpose, e.g. international harmonisation, but they are not necessary to cure poisonous priority.
This Kat offers a ringing endorsement of the call for a reference to the Enlarged Board of Appeal and hopes that this will be the most efficacious means of establishing uniformity on the basis of Tufty's Law.

34 comments:

Anonymous said...

And what about example (b)?

I applaud the enthusiasm here and the clear concerted effort to get this 'law' into law. However, I think it is wasted effort and more good can be done for mankind by spending the energy elsewhere, such as clearing chewing gum from the streets.

Partly, I believe there is no real problem here. The artificial nature of patent rules, and Article 54(3) EPC in particular, are bound to throw up anomalies that fall outside the expectations of users, legitimite or otherwise.

Additionally, I believe the 'problem' can be avoided by appropriate drafting. So many issues arise during prosecution simply because of poor drafting. Clearly, drafting must be a truly difficult task, because the intelligence and education of attorneys is obviously high, just not high enough.

In the issue at hand, I also see problems with the legal interpretation. The issues have been noted in the comments made on the blogs over the last few years. The 'Tufty' posse are not thinking logically about both sides of the arguments, which is usually fatal to such causes.

Ultimately, I don't see the EP buying into the problem or the solution, unusually for them!

Good luck anyway.

Roufousse T. Fairfly said...

I am disappointed by this epilogue.

Luckily, this is not necessary, as a good solution to the problem at hand has emerged from this discussion.

The discussion was interesting but essentially theoretical, and it is not a substitute for arguments in favor of the initial premise.

I haven't seen any discussion as to how the proposed approach could apply to a real case, like the Nestec one, which involved the drawings.

The whole problem of poisonous priorities started with G2/98, and it can also end there.

I don't see how G2/98 could be guilty of anything. Where does it mention Art. 54(3) interference from one's own priority document? May I also remind you of that 1992 dissertation showing that this "danger" is not new?

Accordingly, we call upon the President of the EPO to refer a question to the Enlarged Board of Appeal to ensure uniform application of the law, and make Tufty’s law established EPO case law.

Art. 112:

Decision or opinion of the Enlarged Board of Appeal

(1) In order to ensure uniform application of the law, or if a point of law of fundamental importance arises:

[...]

(b) the President of the EPO may refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question.


Can you please identify two contradictory BoA decisions within the meaning of Art. 112(1)(b)? What question would you put to the EBoA oracles?

T1222/11 refers to a rather conventional case with D4b being a distinct application published between the priority and filing dates. Since the document was deemed to belong under Art. 54(2) there could be no virtual disclaiming/undisclaiming or creative interpretation à la Tufty.

The British Nestec decision was not rendered by a BoA, and the corresponding EPO case was handled by a lowly opposition division. No BoA decision is to be expected for quite a while. Furthermore, the proprietor does not seem to be overly combative about this poisonous priority thing, and I can't really perceive this issue to be of "fundamental importance". The number of applications generally concerned is quite probably rather low, if not negligible. If you insist I could probably supply a hard number, but it would require quite a bit of computer programming. And that misery can easily be avoided by being aware of what you're doing.

Groetjes!

Roufousse

Tufty the Cat said...

I have a feeling we have heard before from this particular anonymous commenter, judging by the petulant sniping tone.

Example b) (broadening of a range) is no problem, as the same principle applies. The range outside of the narrow range is by definition novel over the narrow range.

If you consider I am not thinking logically about both sides, could you point out what the 'other side' is, and how it is logical?

Reinier Wijnstra said...

Example b) is a more simple case than example c), so we left it out of the Post. I is about overlapping ranges, in the example temperature ranges. You can read the details in the Memo itself to which we provided a link. And yes, Tufty's law will deal nicely with it.

Poorly drafting may sometimes cause problems. However, there are a lot of very legitimate reasons to have a different claim in your subsequent application than in you priority application. Some of these reasons we mentioned in our earlier post. These deserve a better fate than the patent dead penalty. I would even say that an inventor who was so unlucky, or short of funds, that he got himself a less good patent attorney deserves better than get his patent rights killed by a poisonous priority.

I am very curious about the problems with legal interpretation. It could very well be that I am not thinking logically, but anonymous doesn't mention any actual problem that makes me doubt our logic.

As for the EPO, you never know where they go. However, at least the board that issued T1222/11 got it right, so I remain hopeful.

Tufty the Cat said...

I would tend to agree with Roufousse that a referral to the Enlarged Board is probably a bit premature, and I can't see the President making a referral until we have clearly conflicting decisions on the point, which to my knowledge has not yet occurred. My guess is that one will happen only if a Technical Board of Appeal disagrees with T 1496/11 on the poisonous divisional issue. I think enough EPAs are now aware of the issue that a request will be made when a suitable occasion arises.

In relation to the Nestec case, the matter is less clear because the decision was fundamentally wrong on the lack of priority point, as I have commented on elsewhere, as well as the patent lacking novelty for other reasons anyway. Either of these would effectively make the poisonous priority issue moot.

Joe said...

Can you please identify two contradictory BoA decisions within the meaning of Art. 112(1)(b)? What question would you put to the EBoA oracles?

T1222/11 set out its reasons for diverging from the views expressed in several different decisions at para. 11.4. I expect the BoA informed the President of their view that the meaning of “clearly-defined alternative subject-matters” should differ from that given in those earlier cases but it was probably thought at the time that this was just development of the case law.

A question could be asked along the lines of:

“Can a generic term in a claim, encompassing species having multiple priority dates, be regarded as defining clearly defined alternative subject-matters (as defined in G2/98) so as to be compliant with Art. 88(2), second sentence?”

I haven't seen any discussion as to how the proposed approach could apply to a real case, like the Nestec one, which involved the drawings

I don’t know if it counts, but I put forward my thoughts on this in the previous comment thread here.

I also note that an appeal on the Nestec decision is to be heard between November and March.

Joe

MaxDrei said...

I too find the follow up a bit of a disappointment. I was hoping for a nod to the Ronson v Lewis case 1963 RPC 103 and the provisions of Section 52 of the UK Patents Act of 1949. This has it that publication by the inventor during the Paris year (that is, the year that lies between an "earlier" and a "later" application which declares the priority of the earlier application) of exactly the content of the earlier priority application, should not be a reason to invalidate a claim of the inventor's later application that happens (for any reason) NOT to be entitled to priority.

The next time DG3 has to wrestle with the "poison" self-collision issue, I hope it will reflect on the public policy issue, whether inventors ought to be able to disclose what they file at the EPO, after they have filed at the EPO, without in consequence shooting themselves in their own heads.

To the anonymous commentator who blithely tells us we have to draft better, he seems to miss the point that one is often amending to re-establish novelty over the unpublished earlier filings of one's competitor which, by definition, you cannot take into account when drafting. Overcoming that art would be straightforward, except that, at the EPO, the amendment might then be poisoned by the resulting self-collision. Where, Mr President, is the justice in that, and besides, do you not want to see the patent system being effective, to promote the progress of useful arts, by encouraging inventors to exploit their inventions without delay, the very next day after they have filed at the EPO, and not holding back till more than one year later than that?

Jakob said...

I agree with the view that alternative subject matters need not necessarily be defined in a claim itself in order for the claim to be capable of having multiple priorities.

However, we should think further about the impact of the "clearly defined" requirement, which does seem to provide essential legal certainty, for example where an intervening publication occurs in the priority year. The relevance of an intervening publication (to both novelty and inventive step) could not be assessed properly where alternative subject matters cannot be clearly defined in a claim with potential multiple priorities.

If we accept that the "clearly defined" requirement is essential then the danger of "poisonous" anticipation continues to loom in some real-world situations. For example, it may be difficult in practice to establish that a description of a specific embodiment/example in a priority document establishes a "clearly defined" alternative. Some technical details might be missing or unclear terms such as "about" or "approximately" might be included. Where a subsequently broadened claim embraces such an unclear example and there is no other basis for priority, the idea of an implicit split in the broadened claim may not be acceptable on account of the detrimental effect on legal certainty.

I look forward to seeing how all this develops but one thing seems certain in the meantime: quality drafting at the outset remains vital.

Anonymous said...

"Overcoming that art would be straightforward". G2/10?

According to G2/98 subject-matter must be specifically disclosed in order to benefit from the right of priority. The theoretical splitting of a claim falls foul of this point.

If you couple G2/98 with G2/10 the proposal appears fundamentally flawed.

All of the 'fairness' arguments can be addressed by amending the EPC. All work-arounds eventually fall down (e.g. Swiss-claims, G1/03)

Tufty the Cat said...

I think it should be fairly clear that the law cannot apply when there is any intervening publication, i.e. a public disclosure, between the priority date and the filing date. If the publication discloses something within the broader later claims but outside the priority disclosure, the only option is to restrict the later claims to what has a valid priority right. Max's mention of section 52 of the old UK act is interesting but there is no such provision in European patent law these days.

Bart van Wezenbeek said...

Although clever drafting may be used to avoid the poisonous priority problem, it will happen - as MaxDrie has ilustrated - that you have to amen your claims, thereby risking to loose priority.

I like Tufty's Law, but I am afraid that it call for more uncertainty, since when will a generic term consist of clearly defined embodiments. Yes in the case of my example and I can think of a few other examples too, but in most cases this will not be the case, and then Tufty's Law will notbe any help.

It would be more prudent to prevent publication of the European application by intentionally abandoning the application when it has served its purpose as priority document. Another solution would be to start with a US or even with a PCT priority document. These may be published without any consequence, at least if the PCT priority application does not enter the European regional phase.

By the way, nice to see that my simple example has been taken for the explanation.

Tufty the Cat said...

In response to the last anonymouse, you don't seem to have read the post above. Our interpretation (which I think is a fair one, and is spelled out quite clearly) is that G 2/98 does not prohibit such theoretical division of claims. This is confirmed by T 1222/11 as well as by the examples given in the memo.

MaxDrei said...

Yep. Thanks Tufty. Readers, when I mentioned Art 52 of the UK Act of 1949, I should have mentioned that it prevents attacks on BOTH the novelty AND obviousness attacks that base themselves on disclosures of the inventor during the Paris year of nothing more than the content of the earlier-filed priority application.

So there is no way that rectification of the "poisonous" issue can clear the way for inventors to promote their inventions during the Paris year. What a pity.

Tufty the Cat said...

I'm afraid I don't get the arguments about 'legal certainty'. Certainty for whom? If a patent is granted with a broad claim, part of which has an earlier priority right that the rest, why is this a problem? It only becomes an issue if there is an intervening publication, which makes the imaginary division of claims inapplicable, as I mentioned above. Otherwise, it should be just as clear whether the claim is valid or infringed as for any other patent claim with a single priority right.

Ron said...

I was a UK patent examiner in the last few years of the UK 1949 Patent Act. My recollection is that our internal instructions positively discouraged any investigation into the correctness of a priority claim, to the extent that objection should only be raised if the earlier application positively disclaimed the later invention.

I only ever raised a priority-related objection on one occasion, which was when I happened to notice that the respective names of the applicants of the priority application and the complete were different, and no assignment had been filed.

Anonymous said...

G2/10 demands certainty and clear and unambiguous derivability. This decision also makes clear which way the current powers in the EPO believe the law should develop, i.e. not in favour of tuftys law, which, like many mis-named laws in history did not originate from tufty.

Yours,
Non-sniping, but with an allowable and equally valid point of view, but non-limelight seeking Anon.

David said...
This comment has been removed by the author.
Tufty the Cat said...

In response to the latest comment from the apparently non-sniping anonymouse, G 2/10 relates to the allowability of disclaimers. As such, it is simply not relevant to the question. If a disclaimer is required, the form of wording is obviously important. For the poisonous priority/divisional question, the wording does not matter but only whether the later claim can be shown to be broader than, and entirely encompass, the earlier priority claim. Your point of view is of course perfectly valid, but in my view is still wrong.

(comment resubmitted in the correct name this time!)

Anonymous said...

G decisions provide generally applicable interpretations of the law, so G2/10 is not restricted in application only to the issue of disclaimers. This decision is a clear move away from special interpretations of the EPC in different circumstances and reins in some of the freedoms provided by earlier G decisions. So, not only does it apply in the present issue as regards determining what is unambiguously derivable, it also sends a message that there will be no special measures for other issues, such as poisonous divisionals.

Anonymous said...

I find it difficult to call it Tufty's law when the principle had already been proposed:

(1) in T 441/93, T 665/00 and T 1222/11,
(2) on Tufty's blog over two years ago by an anonymous commentator (http://tuftythecat.blogspot.com/2011/02/article-543-and-ep-divisionals.html?showComment=1297355720663#c4101316146951304097); and in
(3) the CIPA Journal.

I also think that those who are concerned about legal certainty should read T 1222/11 in a little more detail. This suggests that the test is whether you can:

“conceptually identify a limited number of clearly defined alternative subject-matters by a comparison of the subject-matter of that “OR”-claim with the disclosure of the multiple priority documents, so as to determine which parts of the “OR”-claim or alternative subject-matters are covered by the rights of priority claimed”.

That is, when breaking up the claim, you look to see if the subject matter encompassed by the claim is disclosed within the priority document. If it is, then that subject matter is entitled to priority. If not, then no priority. That seems like a pretty simple test to me.

Moreover, even if it is there is some complication, critics should note the Board's warning that:

"For the avoidance of doubt, the Board wishes to add that it is not the task of the European Patent Office to determine ex officio to which parts of an "OR"-claim can be attributed the right(s) of priority claimed. In view of an intermediate prior art which appears relevant for assessing the patentability of a particular "OR"-claim, the burden of proof that said particular claim benefits from a partial priority or partial priorities, if the latter is prima facie not immediately obvious, is on the person alleging the existence of said partial priority."

Accordingly, it is up to the Patentee/Applicant to prove that partial priority can be obtained.

I fail to see how this does not give rise to legal certainty (or as much legal certainty as possible).

Tufty the Cat said...

The last anonymous comment about G 2/10 seems a bit hand-waving to me. Of course G decisions provide "generally applicable interpretations of the law", but this should not be taken out of context. What is "unambiguously derivable" from an application is always about amendments that may or may not add matter. The proposed solution to the poisonous priority/divisional problem (which may or may not be justified in being called 'Tufty's law'; it wasn't my idea to call it that, and I would in any case prefer to call it a conjecture or hypothesis) is specifically not about amendments, but is a way of looking at a claim having multiple priorities and how they both give rise to valid claims in different ways. There is plenty of support for this in the case law, such as the T decisions cited by the last commenter. Whether I came up with it first as a solution for the problem or not is irrelevant, and to be honest a bit petty. I don't care what it's called, but I think it's a better name than "Anonymous commenter 1298355720663's law".

Tim Jackson said...

Tufty: "I think it should be fairly clear that the law cannot apply when there is any intervening publication, i.e. a public disclosure, between the priority date and the filing date."

If the public disclosure is of something within the priority document, then why not? See example (a) of the FICPI Memo C.

This holds that "if public use of the chlorine embodiment is proved to have taken place between the two priority dates, the halogen claim will be declared ... valid in its entirety in a country of the second type."

The "second type" is a country which allows multiple priority claims for one and the same claim. G2/98 points out that this FICPI memo is the reason why the EPC allows exactly that.

Of course, the FICPI memo only considers novelty. In the case of an intervening public use or publication, we must also consider obviousness.

There is a notional portion of the broad halogen claim which covers "halogens not being chlorine". That portion of the claim is not entitled to the priority. [*]

So now we must ask "Given the prior use of chlorine, was it obvious to use a halogen which is not chlorine?"

In this halogen example, the answer may be yes, it was obvious. But in cases such as coating a hollow body which is not a pipe, or the Nestec coffee machine, the answer will depend on the facts of the case.

Tufty says: "If the publication discloses something within the broader later claims but outside the priority disclosure, the only option is to restrict the later claims to what has a valid priority right." This is clearly correct. It is also true if things within the broader later claims (but outside the priority disclosure) are obvious from an intervening publication of what was in the priority application.

And that is the important difference over section 52 of the 1949 Act. Section 52 provided immunity even against obviousness over a publication of information in the priority document. The FICPI memo and "Tufty's law" only provide immunity in a novelty situation, such as under Article 54(3).

-------------
[*] I note that this notional splitting of the claim is consistent with the earlier Enlarged Board decision G3/93, which held that an intervening publication constitutes prior art which is citable to the extent that the priority is not validly claimed. Though the examples in G3/93 are AND-claims rather than the OR-claims of the FICPI memo.

Anonymous said...

No significant support for this proposal then.

Tim Jackson said...

Why do you say there is no significant support? It provides immunity in a novelty situation, thereby preventing the possibility that your own priority document can lead to the the complete death of your patent. I certainly support that.

Myshkin said...

Part 1/2

In my view the weak point in "Tufty's law" is the reliance on a "theoretical" splitting up of the claim.

The way I understand G 2/98, it states that a claim can only have two priority dates if its subject-matter consists of two (or more) individually disclosed alternative subject-matters.

I do agree that it is not necessary to actually rewrite the claim as an explicit OR-claim. That would not be of help to anyone.

But as I already wrote, in my view it is necessary that the subject-matter being claimed really is the union of two or more alternative individually disclosed subject-matters.

Actually, it seems I am merely repeating the words of G 2/98, reasons 6.7 here, except that I have added "individually disclosed". I believe this requirement is implicit in G 2/98, reasons 6.7.

For the gold / noble metal example, it can be argued that "noble metal" is an individual disclosure of each of the few noble metals (where I am ignoring that the Wikipedia entry for noble metal suggests that not everybody agrees on its definition). In this case Tufty's solution would work. A claim to "noble metal" can theoretically be rewritten as "one of ruthenium, rhodium, palladium, silver, osmium, iridium, platinum, gold" so can theoretically be split into "gold" OR "one of ruthenium, ..., platinum". This is similar to the halogen example in the Memorandum.

However, if I change the example to iron / metal, then it is not true that "metal" is an individual disclosure of a small number of specific metals. A claim to "metal" cannot be rewritten as "iron" OR "any metal but iron", unless the application also specifically discloses "any metal but iron".

This is where G 2/10 comes into play. G 2/10 has decided that a disclosure of "iron" and "metal" does not disclose "any metal but iron".

Now how about example C of the Memorandum? In my view, the drafter of this example did not have the benefit of knowing G 2/10 and, more generally, was not aware how the case law on Art. 123(2) would develop in the years to come. The examples in the Memorandum were given to illustrate a principle. The principle was and is sound. Example C is not (anymore). It is true that T 1222/11 takes a different view.

Myshkin said...

Part 2/2

A possible way to cure the problem also for the iron / metal case is by applying G 1/03. The priority document disclosing "iron" is 54(3) prior art, so can be disclaimed. This gives a claim to "any metal but iron". The application itself individually discloses "iron" (assuming it includes everything from the priority document), so "iron" can be claimed as well. This solves the problem and salvages "Tufty's law" (except that I would not call it "Tufty's law" since this solution was already discussed at least here). Unfortunately, G 2/10 states that G 1/03 does not apply to the case where the subject-matter to be disclaimed is disclosed in the application, and it seems to follow from point 4.7 of G 2/10 that the approach of G 1/03 also does not apply by analogy.

I believe that if the EBA ever comes up with a solution, it will be based on the introduction of a specific principle along the lines of "subject-matter X with effective date D is not prior art under Art. 54(3) for an application that discloses the same subject-matter X with the same effective date D". As far as I'm aware, this would precisely solve all problems (and seems quite fair to me).

I would also like to note that the "theoretical claim splitting" not requiring individual disclosures of the alternatives would seem to give rise to countless problems with priorities being (partially) lost due to the priority application not being the "first" application and problems of (partial) double patenting. And there are probably other problems I have not yet thought of. So beware what you ask for.

Myshkin said...

I'll comment a bit more on example C of the Memorandum.

Priority document P1 discloses coating of pipes. Later priority document P2 discloses coating of hollow bodies. Presumably, P2 also discloses coating of pipes.

The example assumes that the applicant could have included in the application a claim to coating of "hollow bodies not being pipes", and that this claim would have had priority from P2. See page 5, first paragraph.

In general, this assumption is false.

Clearly, the content of P1 is irrelevant for the question whether a claim has priority from P2. So we only have to consider whether P2 discloses "hollow bodies not being pipes". Assuming that P2 only discloses "pipes" and "hollow bodies", it follows from G 2/10 that it does not disclose "hollow bodies not being pipes".

Of course the example works fine if P2 specifically discloses coating of "hollow bodies not being pipes". But then the application (which we may assume to include P1 and P2) will also disclose "hollow bodies not being pipes" and it is possible to perform the "theoretical splitting" entirely within the bounds of Art. 123(2).

Anonymous said...

I say 'no significant support' because there has been no showing on this blog of much support.

Anonymous said...

Arnold J. provides a reasoned discussion of entitlement to priority in this latest decision:

http://www.bailii.org/ew/cases/EWHC/Patents/2013/1876.html

Anonymous said...

Sorry, that should read Birss J. not Arnold J. - I was getting mixed up with the copyright case.

Tim Jackson said...

HTC v. Gemalto (cited by Anonymous at 08:55) discusses priority at paragraphs 150 - 195.

Birss J held that claim 1 was not entitled to priority because it used the generic term "high-level language". Whereas the priority document only disclosed the Java language, with no hint that the invention was applicable more generally. Nevertheless, sub-claim 3 was entitled to priority, as it limited claim 1 to Java.

Something which doesn't seem to have been argued, though, is whether claim 1 would have been entitled to a partial priority, insofar as it covered Java, based on a notional splitting of the claim into Java and non-Java alternatives.

Thus, I think that the English courts have not yet engaged with the point raised in T1222/11. Namely, that G2/98's requirement for clearly defined alternatives has to be seen in the light of the FICPI Memorandum C. I can see a clear correspondence between (a) pipes and hollow bodies not being pipes, and (b) Java and high-level languages not being Java.

HTC v. Gemalto does discuss multiple and partial priorities, but only for sub-claim 8 which raised different issues (paragraphs 192 - 193). There is some interesting discussion in paragraphs 160 - 163.

At 163, Birss suggests that the facts of the present case are very different from Nestec. So he didn't accept the proposition that Nestec applies to any generic terms in a claim.

On the other hand, at 162, Birss clearly felt bound by the House of Lords' Biogen decision. "However, the fact that a broad claim will cover something (among other things) is irrelevant to priority as long as the priority document supports the broad claim at its level of generality". So presumably he would not have been prepared to notionally split claim 1, had he been asked, since the priority document didn't support high-level languages generally.

I think any change will have to come from the EPO Boards of Appeal. On that, Tufty reports that Nestec's EPO appeal T 1674/12 is due to be heard on 9 October 2013. He speculates that the Technical Board of Appeal might refer the partial priority issue to the Enlarged Board. Even without that, I see that the Technical Board has been enlarged to five members rather than the normal three, so clearly they think it is an important issue.

Anonymous said...

While not directly a "poisonous divisional" case, the decision in T 0059/11 might be on interest.

http://www.epo.org/law-practice/case-law-appeals/pdf/t110059eu1.pdf

Both the opposed patent and D1 claimed priority from the same DE application. Claim 1 of the main request was considered to be not entitled to the priority datebut lacked novelty over D1, which presumably was.

Would, or should, the situation have been different if both D1 and the opposed patent had been bundled into the same PCT filing?

Anonymous said...

It is not even indirectly a poisonous divisional case.

If the opposed patent was 'bundled' into the same filing as D1, then D1 would not be prior art against the patent, because it would be the same application with D1 being the PCT application from which the EP evolved.

Anonymous said...

It is not even indirectly a poisonous divisional case.

If the opposed patent was 'bundled' into the same filing as D1, then D1 would not be prior art against the patent, because it would be the same application with D1 being the PCT application from which the EP evolved.

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