Citing prior art in European patent applications

The IPKat has noticed a recent decision of an EPO Board of Appeal that relates to the question of whether it is necessary, rather than merely preferable, for a European patent application to mention relevant prior art known at the time of filing. The issue relates to Rule 42(1)(b), which states that the description shall "indicate the background art which, as far as is known to the applicant, can be regarded as useful to understand the invention, draw up the European search report and examine the European patent application, and, preferably, cite the documents reflecting such art".

Patent attorneys will be well aware that not mentioning relevant prior art known at the time of filing cannot of itself make a European application or patent invalid. The examiners for application 06024212.0, however, apparently thought differently, contrary to long-standing EPO practice. From a rather strained interpretation of the German version of the relevant rule, the examining division's view was that not including a reference to relevant prior art known to the applicant at the time of filing would make the application void ab initio. The application was refused as a result. The applicant, Samsung Electronics, unsurprisingly appealed.

In the resulting decision T 2321/08, the Board considered that the examining division had got it completely wrong. Rule 42(1)(b) did not put any stringent obligation on the applicant to cite relevant documents known at the time of filing, and failure to do so was in any case correctable after filing by making appropriate amendments. There was no reason to depart from the long-standing EPO practice of allowing amendments to be made to the description to cite relevant documents.

The IPKat wonders what on Earth the examining division in this case were thinking of, but is very glad that the Board reached the decision they did, not least because the consequences of the decision going the other way would have been very bad indeed. The well-known consequences in the US of not citing relevant documents are bad enough, but following the examining division's reasoning in this case would inevitably result in many currently pending European applications and granted patents becoming invalid without any hope of recovery. Following the decisions in G 1/05 and G 1/06, the IPKat finds it surprising that an examining division could even contemplate such a draconian interpretation of the rules.
Citing prior art in European patent applications Citing prior art in European patent applications Reviewed by David Pearce on Friday, June 26, 2009 Rating: 5


  1. With you on this one David. This maverick, out of control Examining Division would have done better to have thought through the consequences of its macho behaviour before falling in with the warped view of a single Examiner with a chip on his shoulder. For those bent on rubbishing the competence of DG2 this is a Godsend. I thought there was a good esprit de corps in DG2 but an ED decision like this does more harm to the colleague examiners than to the world outside the EPO.

  2. All search and examination is now in DG1, but I agree.

    (...) following the examining division's reasoning in this case would inevitably result in many currently pending European applications and granted patents becoming invalid without any hope of recovery.

    Not quite. The validity of granted patents would not be affected. Also I don't follow the reference to G 1/05 and G 1/06. The legal situation in those decisions is completely different. Note that "applicant friendliness" plays a role neither in G 1/05 and G 1/06, nor in T 2321/08.

  3. Ah, I suppose the reference to G 1/05 is related to point 8.3 of the reasons of T 2321/08. "... whether or not an application complies with the substantive requirements of the EPC is to be decided on the text finally submitted or agreed by the application ...".

  4. Hopefully, the members will be offered a substantial period of retraining. Such decisions have no place in the current EPO drive for improving the robustness of the granted patents. Will the applicant be offered a new division for the continued examination?

  5. The revocation and opposition grounds are laid down in art. 138 and art. 100: the list is exhaustive. Therefore the interpretation favored by the examining division would not have affected the validity of a patent as granted. I agree with anonymous. But an other question arise: the unclean hands of the applicant have no sanction in Europe. However to let declare a patent void costs time and money. Why is the american rule so bad ? The british lawyers could maybe advise me.

  6. According to some commenters on my blog, it could have been a "test case" for the Examiners and/or a way to "punish" a behaviour considered as abusive from the point of view of the Examining division.

  7. How to begin to reply to the question, where's the harm in the English common law concept of "equity" (clean hands). How about this:

    Take the cost of litigating a patent in Germany and multiply by ten. That is the cost in England. Then multiply again by ten, to get the cost in the USA. That's the price one pays for "equity". Is it worth it? Can we not reconcile equity with "proportionate"? Yes. Just look at how England handles patent litigation, as a common law jurisdiction within the EU.

    Most of the time, the EPO despises English common law and its practitioners, doesn't it? Maybe English law does have something to offer, after all. But it's a bit late now to have second thoughts, isn't it?

  8. "The IPKat wonders what on Earth the examining division in this case were thinking of"
    A quick perusal of the composition of the Examining Division begins to shed some light: I see Mr Van Staveren strikes again.
    A bit of an insider joke, this, yet those IPKat readers who have faced him in prosecution and oral proceedings, will surely laugh (out loud, as I did) at this factoid.

  9. Mr van Staveren would do well to reflect on the unintended consequences of sanctioning Applicants who fail to recite in their applications all the prior art they know. Precisely for this reason, US corporations DO NOT WATCH the emerging flow of A and WO publications. What sort of a crazy patent system is it, that has a built-in incentive on inventors to deliberately NOT look at the technical content of WO and EPO-A publications? Mr van Staveren might also reflect on the incentives the European system already has built in to it, to tell the ED all the best art. If there are prior art issues, better to address them early, well before the B issues, rather than afterwards. At least then there is time to file a divisional (Ha Ha).

  10. The decision of the Examining Decision is...well...weird to say the least. Not only did it refuse the patent based on the applicant's "failure" to disclose prior art, but it did so after the applicant actually amended the application so as to cite that prior art, on the completely spurious grounds that the applicant should have done so before the search report.

    Also, this can not be laid solely at the feet of an (ahem) "eccentric" primary examiner. The whole point of the three-member Examining Division is that of preventing such arbitrariness.

  11. I do not understand all the fuss about this case.
    An examining division's understanding of the EPC drifted away along a weird route, something that could have been prevented by some minutes of reflection and a good dose of common sense (Art. 0 EPC).
    This was corrected in appeal and the universal order restored.
    Full stop. Nothing more and nothing less.
    At least in this case the EPC's system worked as it should.
    So why all this fuss?

  12. But an Examining Division is not one but three highly trained and intelligent examiners. We all know that Patent Office Examiners, taken in isolation, are often as crazy as individual patent attorneys. But we pay high fees, for the legal certainty of three examiners on each case. We like to think that a single loopy examiner in a Division will be out-voted by two sane members in the Division. We do not expect whole Divisions still to be aberrant after hearing a senior member of our profession at oral proceedings. Were those three examiners listening, all three with three open minds, I wonder. That would have been more than enough, to get to the previous commenter's "minutes of reflection" and "dose of common sense".

  13. This shows that even the best system may fail and that a further independent instance is essential.

    With the EPC 2000 even the BoAs have a further, although very limited, instance for correcting substantial procedural violations that cannot stand without being corrected.

    However, I agree with anon@11:56 that three examiners should be enough (and in fact they usually are) for preventing such things from happening.

  14. Many people are uneasy about using the "naming and shaming" process to regulate human behaviour and keep it decent, measured and considerate. Humans have been using it since pre-history and I can see its present usefulness, in keeping whole Examining Divisions positively focussed (as opposed to negatively cussed). For naming and shaming to work, however, we also need this blog.

  15. Agree with all the commenters above that the Examining Division clearly got this wrong. My instant reaction to this decision was the thought "what if this actually becomes a legal requirement?" The majority of pending applications I have drafted would be invalid; future applications would have to cite every and any prior art document that even comes close to the invention. In short, it would be a nightmare.

    However, on closer inspection of the case you can see why the Examining Division were irritated. Assuming the prior art cited in the search report is relevant (I confess I have not checked this), at the time of drafting the applicant must have been aware that the claims were not novel. Now, I may not acknowledge every prior art document in the background when drafting, but I do at least attempt to file claims that are novel.

    If I were an Examiner faced with an Applicant who was too lazy to even identify his own invention, I would probably try to find a way to fight back too!

  16. But, anonymous, surely the EPC and the EPO have enough tools already at their disposal, to punish severely any Applicant who files an application which fails to:

    "identify his own invention"

    I have in mind, amongst other things: Article 123(2) and Rule 137.

    What is prior art for Europe (Applicant's own earlier stuff) isn't for Asia and the USA. Is the EPO going to go down the US road, of saying you can file anywhere you like as long as it's at the USPTO. The G Decision on divisionals suggests not. Rather, it suggests that the EPO appreciates that the drafter of a patent application has to draft in such a way as to reconcile the mutually exclusive requirements of different jurisdictions. Well done DG3.

  17. I gather from a source that the said Mr van Staveren was promoted this week.

  18. Indeed, he became a director in DG1 on 1 July.
    I think, in the main, it's better to stick to more obvious objections, like novelty and inventive step.
    The primary examiner did cite 7 X-documents, after all. You would have thought he could do something with those...

  19. Let's not get too excited about maverick examination divisions marauding around the Wild West of The Netherlands. This particular Rule clearly apes the US disclosure requirement - regardless of its intention - but was susceptible to more than one interpretation. "The power of the lawyer is in the uncertainty of the law" as Bentham probably said, so there is no harm in testing something unclear. Remember, no stare decisis at the EPO, so it is sometimes necessary, if perhaps difficult for common-law lawyers to comprehend, for a higher instance to state the bleeding obvious just to remove lingering doubts. The law, as we are often reminded, has to be applied as it is, not as we might like it to be, so we shouldn't recoil at the opportunity to clarify something early. If only it were so simple as for software patents, which have indeed been referred to the Enlarged Board. A maverick spirit is not needed to do this, otherwise every judge who is ever appealed, or every tribunal which makes an Article 234 EC reference would be considered maverick. (OK that might spark another debate for another day!)

    As for equity, please remember that the EPC is based on European concepts of civil law, and that despite the appearance of "equitable" and variations in recent case law, the EPC does not know of equity. At least 'nemo censetur ignorare legem' - but better to make sure what it is.

  20. Have a look at the examiner's continued rants (go to DINO for this file EP20060024212). Seems he doesn't agree with the Board of Appeal and is determined to let everyone know who's 'right'.


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