tag:blogger.com,1999:blog-5574479.post9138973921123567628..comments2024-03-28T16:45:51.051+00:00Comments on The IPKat: Full decision of Enlarged Board of Appeal in partial priority / poisonous divisionals referral (G01/15) publishedVerónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger42125tag:blogger.com,1999:blog-5574479.post-13487511923325165662017-02-17T09:58:04.581+00:002017-02-17T09:58:04.581+00:00Interesting decision in that priority is now all a...Interesting decision in that priority is now all about whether the priority document discloses any subject matter which can be used to overcome the intervening disclosure and it does not matter how the claim in the Convention case is phrased as long at it encompasses the relevant matter. So we might find ourselves looking into the experimental details in the Examples of the priority document and comparing them to experimental details in the intervening disclosure, i.e. the analysis might not depend on claim language and that will inevitably be difficult in some circumstance. Claims are clearly worded and have sharp boundaries, and I wonder if the EB realised the implications of not having analysis of the disclosure of the Convention claim as part of the test. Being able to generalise from the Examples of the priority document might now become a much more frequent part of arguing priority entitlement.<br /><br />Also for the specific situation where a sequence was corrected at Convention filing (without retaining the incorrect sequence in the Convention specification) this is welcome news. So disclosure of incorrect sequence+% homologues in the priority document will support priority for correct sequence+%homologues as long as the Convention claim encompasses the disclosure in the priority document. [This specific situation happens more often than it should!]Carltonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-36223498755744720242017-02-14T21:09:12.346+00:002017-02-14T21:09:12.346+00:00This wouldn't be a generic OR-claim, so G1/15 ...This wouldn't be a generic OR-claim, so G1/15 isn't directly relevant. It would be decided on the basis of previous case law.<br /><br />Unless there is a good selection invention, why would you want to limit the scope of your claim in this way, compared to the priority document? The only reason I can think of would be to avoid some newly-discovered prior art, falling within your priority disclosure but published before your priority date. But then you would need to be non-obvious and/or a good selection over that prior art, not just over your priority document.<br />Tim Jacksonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-3718016364490737672017-02-13T13:17:09.882+00:002017-02-13T13:17:09.882+00:00So, I have a question. Priority application clai...So, I have a question. Priority application claims process carried out at from 1 to 100 deg C. EP application is narrower - say 2 to 22 deg C. Ignore point disclosures within the range for the time being.<br /><br />Using "added subject matter" test, generic claim in the EP application not entitled to priority (had you amended "1 to 100" to "2 to 99" on an EP case it would add matter, so the amended claim should lack priority). <br /><br />If the disclosure of 1 to 100 becomes citeable under Art 54(3) - eg because priority application is an EP application which publishes, or via a divisional, does the generic claim in the EP application lack novelty. Applying the case law on selection inventions, range is not "narrow" compared to the prior art, so arguably lacks novelty. Could there be self collision under such circs?<br /> Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-51448817235064264132017-02-11T16:40:07.510+00:002017-02-11T16:40:07.510+00:00Well, not to bother anyone with the selection part...Well, not to bother anyone with the selection part of the new invention, I wish also<br />to point out that as indicated e.g. in the decisions T871/08 and T1186/05, the boards<br />tend to use, when comparing values of prior art with values of the invention,<br />the least amount of significant numbers. In the present case,<br />100 is given to the accuracy of only one significant number. Thus, it might be possible<br />that even the range 100-120 (excluding 100) would not be novel, since<br />120 would be rounded to 100. To emphasize this point, the upper<br />limit could be e.g. 104 or 100.4; neither of which is _identical_ to 100,<br />but are both _novel_ in view of 100?<br /><br />I'm not saying that such claiming would be wise, but it is clearly something that<br />can be disclosed.<br /><br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-1506567810424845052017-02-09T11:29:05.499+00:002017-02-09T11:29:05.499+00:00A selection invention would be an exception to the...A selection invention would be an exception to the general rule that 70...100 is disclosed (made available) by a more generic disclosure of 50...100. If 70...100 is disclosed, then it gives rise to a partial priority. If it's not disclosed then it's not novelty destroying (selection invention). There is no problem. <br /><br />This just repeats my comment on 7 Feb at 23:16.Tim Jacksonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-21478209495634879322017-02-09T05:51:26.040+00:002017-02-09T05:51:26.040+00:00It is also probably worth to note, that while 100 ...It is also probably worth to note, that while 100 seems to have the<br />partial priority, 100 to 120 (excluding 100) is an extension to<br />the original invention and clearly novel, 70 to 100 (excluding 100) is a different<br />invention than 50 to 100. Moreover it seems to be a selection invention<br />from the original. And yet, it is as close as possible to a known example (i.e. 100).<br />So it seems that it cannot be "sufficiently far from known<br />examples" (see Case-Law for selection inventions).<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-59873022906293626082017-02-08T13:30:04.437+00:002017-02-08T13:30:04.437+00:00Anon at 06:23 "In the present example, I can...Anon at 06:23 <i>"In the present example, I can not see any identical subject matters."</i><br /><br />We're talking about the subject matter of the priority document, both for novelty and partial priority. Not only is the subject matter identical, it's the same document in both cases.<br />Tim Jacksonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-5694936787800163232017-02-08T10:25:26.937+00:002017-02-08T10:25:26.937+00:00The anon who stated the following got it spot on. ...The anon who stated the following got it spot on. The end point of 100 is the only subject matter disclosed in the priority document that is novelty destroying of the latter range, but as this end point has partial priority where priority claimed, there is no problem.<br /><br />"<br /><br /> Anonymous said... <br />Note that 50...100 is novelty destroying for 70...120 because the range 50...100 discloses the endpoint 100 and it is that endpoint that destroys novelty of (and is encompassed by) 70...120.<br /><br />If the priority document discloses 50...100, then a claim to 70...120 will have partial priority for 100. I don't see why it would have partial priority for 70...100, because 70...100 is not subject-matter that is disclosed by 50...100. <br /><br />"Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-45103752317289975902017-02-08T10:24:22.587+00:002017-02-08T10:24:22.587+00:00Anon on 8 Feb at 08:47 -
"So 50...100 is nov...Anon on 8 Feb at 08:47 - <br /><i>"So 50...100 is novelty destroying for 70...120 simply because 100 is"</i><br /><br />Anon on 7 Feb at 19:45 - <br /><i>"If the priority document discloses 50...100, then a claim to 70...120 will have partial priority for 100"</i><br /><br />Me on 7 Feb at 23:16 - <br /><i>"G1/15 unifies the disclosure tests for partial priority and novelty. So in a potential 'poisonous priority' situation, they cancel out."</i><br /><br />Perhaps we should stop agreeing so vehemently?<br /><br />Tim Jacksonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-41958441918040730462017-02-08T08:47:49.991+00:002017-02-08T08:47:49.991+00:00Tim, you have to consider the endpoints of the ran...Tim, you have to consider the endpoints of the ranges. A range discloses its endpoints. An endpoint (or any other individually disclosed value) is novelty destroying for any range that it belongs to / is encompassed by. So 50...100 is novelty destroying for 70...120 simply because 100 is.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-66146691110975465212017-02-08T06:23:08.151+00:002017-02-08T06:23:08.151+00:00I would like to emphasize, that according to G1/15...I would like to emphasize, that according to G1/15 the right<br />to priority operates to exclude self collision<br />of _identical_ subject matter (see r. 4.4).<br />As I see it, this should be read as identical subject matter _only_.<br /><br />In the present example, I can not see any identical subject matters.<br />However, it would be possible to conceptually divide the<br />later invention (70-120) to three parts, whereby the single point 100 <br />would be identical subject matter, as indicated by the previous anonymous.<br /><br />Moreover, the Board was well aware that all novelty-destroying prior<br />art will not necessary enjoy (partial) priority. As indicated in<br />reasons 4.3.4, novelty objection can succeed when priority can<br />not be recognized. <br /><br />To me it seems that if you put e.g. these two _different_ inventions <br />to a same application, you may arrive at poisonous divisional, <br />provided that only one of them has the right to priority.<br /><br /><br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-14860149936907426892017-02-07T23:16:50.287+00:002017-02-07T23:16:50.287+00:00Either 70...100 is subject-matter that is disclose...Either 70...100 is subject-matter that is disclosed by 50...100, so it is encompassed by 70...120 and gives partial priority.<br /><br />Or 70...100 is not subject-matter that is disclosed by 50...100, in which case neither would it be novelty destroying for 70...120. (E.g. perhaps there is a selection invention.)<br /><br />G1/15 unifies the disclosure tests for partial priority and novelty. So in a potential 'poisonous priority' situation, they cancel out.<br />Tim Jacksonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-23669360637519873602017-02-07T19:35:05.296+00:002017-02-07T19:35:05.296+00:00Note that 50...100 is novelty destroying for 70......Note that 50...100 is novelty destroying for 70...120 because the range 50...100 discloses the endpoint 100 and it is that endpoint that destroys novelty of (and is encompassed by) 70...120.<br /><br />If the priority document discloses 50...100, then a claim to 70...120 will have partial priority for 100. I don't see why it would have partial priority for 70...100, because 70...100 is not subject-matter that is disclosed by 50...100.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-67047793610837853002017-02-06T13:48:59.888+00:002017-02-06T13:48:59.888+00:00I don't see the temperature range 70 - 100 as ...I don't see the temperature range 70 - 100 as an AND claim.<br /><br />An AND claim would include (feature A) AND (feature B). The reason it's a narrower claim than one for feature A alone is because it would only cover embodiments which included both features A and B together. <br /><br />In the case of these temperature ranges, that's not the reason why 70 - 100 is narrower than 50 - 100. An embodiment might use 80 degrees and fall into both ranges, or it might use 60 degrees and fall into one but not the other. But no embodiment uses both 60 and 80 together.<br />Tim Jacksonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-16909299316038682342017-02-06T12:35:25.804+00:002017-02-06T12:35:25.804+00:00Tim Jackson of 5 Feb at 15:31 – Thank you for your...Tim Jackson of 5 Feb at 15:31 – Thank you for your pleasant comment for me.<br /><br />In G3/93, the Enlarged Board stated as follows:<br /><br />1. A document published during the priority interval, the technical contents of which correspond to that of the priority document, constitutes prior art citable under Article 54(2) EPC against a European patent application claiming that priority, to the extent such priority is not validly claimed.<br /><br />2. This also applies if a claim to priority is invalid due to the fact that the priority document, and the subsequent European application, do not concern the same invention because the European application claims subject-matter not disclosed in the priority document.<br /><br />This provision is definitely applicable to AND-claim, because AND-claim has no priority. However, there is some ambiguousness whether the provision be applicable to OR-claim because OR-cliam has at least partial priority.<br /><br />I guess that Beloit v Valmet made the ambiguousness clear, namely the judgement introduced the extended the above-mentioned provision of G3/93 to OR-claim. Black Book also explains well, I guess. <br /><br />Now I am requesting these documents to my acquaintance in Europe.<br />Anyway I am studying legal framework in the UK.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-83460048697320057452017-02-06T11:46:11.813+00:002017-02-06T11:46:11.813+00:00I beg to differ. 70 -100 is an "and" cla...I beg to differ. 70 -100 is an "and" claim in view of the original 50 - 100. <br />According to the Memorandum, which G1/15 seems to agree on, "and" claims cannot<br />enjoy partial priority. To say the least, this matter seems to still be<br />open for discussion.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-36956266022374306082017-02-06T10:45:06.237+00:002017-02-06T10:45:06.237+00:00Excuse me, the relevant part which would destroy n...Excuse me, the relevant part which would destroy novelty (but enjoys partial priority) is 70 - 100.Tim Jacksonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-57508814865043166862017-02-06T09:44:08.696+00:002017-02-06T09:44:08.696+00:0050 - 70 is not encompassed, but neither is that pa...50 - 70 is not encompassed, but neither is that part novelty destroying. The part which would destroy novelty is 50 - 100, but that enjoys partial priority.<br /><br />The first step of G1/15's process is to determine which subject matter is relevant.<br />Tim Jacksonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-49082456747133991602017-02-06T06:45:19.994+00:002017-02-06T06:45:19.994+00:00In response to e.g. Tim Jackson, it seems that
e.g...In response to e.g. Tim Jackson, it seems that<br />e.g. a process done at a temperature 50 ... 100 is<br />not encompassed by a process done at a temperature 70 ...120.<br />The latter does not encompass the part 50 ... 70.<br />Moreover the former is novelty destroying prior art.<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-67079668635906085212017-02-05T22:48:53.718+00:002017-02-05T22:48:53.718+00:00I don't believe the decision has gone against ...I don't believe the decision has gone against G2/98, and the law applied is basically the Paris Convention from a long long time ago, so no new law created by the Enlarged Board.<br /><br />At least we agree that it is not Tufty's Law.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-42968503159040828482017-02-05T15:31:31.015+00:002017-02-05T15:31:31.015+00:00Anon of 4 Feb at 07:21 - What is ground that you d...Anon of 4 Feb at 07:21 - <i>What is ground that you don't think the FICPI Memo considered inventive step?</i><br /><br /><br />Previously I suggested that if chlorine was publicly disclosed between the first and second priority dates, then maybe that would render bromine, iodine or fluorine obvious, depending on the facts of the case. This assumes that the FICPI Memo was only considering novelty.<br /><br />Paragraph 23 of the FICPT Memo says that if multiple priorities are allowed for one and the same claim, then the halogen claim would be valid, even if there was public use of the chlorine embodiment between the two priority dates. If that was considering inventive step as well as novelty, then it would contradict my suggestion.<br /><br />However, in that case, the FICPI Memo would also contradict Decision G3/93. Bromine, iodine and fluorine cannot validly claim the first priority date. In accordance with G3/93, therefore, the disclosure of chlorine is part of the state of the art under Article 54(2) EPC and can be cited for inventive step, to the extent that the claim covers bromine, iodine or fluorine.<br /><br />Actually, I think it would be quite nice if the FICPI Memo meant that G3/93 was wrong. It would be safe again for inventors to publish the content of their initial priority document in the priority interval. Decision T301/87 found that was OK, but G3/93 overruled it.<br /><br />However, this would take another Enlarged Board decision. I see no prospect of that happening. They would need to overrule G3/93. Or possibly they could say that G3/93 is limited to the AND-claims which it actually considered, and doesn't apply to OR-claims.<br />Tim Jacksonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-21416220970932122652017-02-05T15:03:20.209+00:002017-02-05T15:03:20.209+00:00@Anon of 5 Feb, 7:24 GMT:
If subject-matter is nov...@Anon of 5 Feb, 7:24 GMT:<br />If subject-matter is novelty destroying for a claim, then by necessity the claim encompasses that subject-matter.<br /><br />@Anon of 4 Feb, 19:20 GMT:<br />Since G 1/15 goes against several aspects of G 2/98, I would say it creates new law. I guess one could also say it clarifies G 2/98.<br /><br />I think <a href="http://tuftythecat.blogspot.com/2013/05/imaginary-claims-and-conflicting.html" rel="nofollow">this post</a> is the origin of "Tufty's law" (see also <a href="http://ipkitten.blogspot.com/2013/07/how-tuftys-law-detoxicates-poisonous.html" rel="nofollow">here</a>) and it certainly does propose the partial priority solution. As Tufty admitted already in that post, he was helped by comments to earlier posts. At least some of the earlier suggestions were based on the idea of applying a G 1/03-type disclaimer (after all, the poisonous part is 54(3) prior art). Unfortunately G 2/10 seems to rule that out since one would typically have to disclaim <i>disclosed</i> subject-matter.<br /><br />As far as I know, "priority" for the partial priority solution goes to the board deciding T 1222/11. But earlier disclosures of the idea may exist in literature or blogs...Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-53435001538842454592017-02-05T13:27:46.425+00:002017-02-05T13:27:46.425+00:00Anon at 07:24, can you give an example of subject ...Anon at 07:24, can you give an example of subject matter that would be novelty destroying but not encompassed by the claim? It seems to me that "encompassed by" aligns the disclosure test for partial priority with the disclosure test for novelty. So if you are entitled to partial priority, it exactly counters the novelty attack. And if you are not entitled to partial priority, the novelty attack will fail too.<br />Tim Jacksonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-4257593186416606042017-02-05T07:24:32.039+00:002017-02-05T07:24:32.039+00:00It would have been nice to have a comment on quest...It would have been nice to have a comment on question 5, too.<br />See the comment of Anon of Friday, 3 February 2017 at 07:32:00 GMT.<br />More importantly, it seems that a priority document may disclose<br />subject matter that is novelty destroying to and not encompassed<br />by a claim of a subsequent patent/application. In such case the<br />same problem would rise again.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-36977661381720172872017-02-04T19:20:44.713+00:002017-02-04T19:20:44.713+00:00Having flicked back through Tufty's original p...Having flicked back through Tufty's original post, I am at a loss to explain this sudden claim to the EPO applying Tufty's law. Tufty agreed with an expert witness who stated that a parent and divisional are one and the same application, but this is not a reason given by the Enlarged Board. Other commentators discussed the 'partial priority' solution in their suggestions over 'metal' being read as 'metal minus copper' for the purpose of assessing the priority claim.<br /><br />Let's not label this "Tufty's Law", but let's accept that no new law has been created.Anonymousnoreply@blogger.com