The Enlarged Board of Appeal at the EPO has issued its order in case G 1/15, but not yet its decision. From the order, it appears that poisonous priorities have been neutralised. The Enlarged Board has said:
A generic "OR"-claim is one that covers multiple alternatives without spelling them out. If such a claim can have partial priority to an earlier application that disclosed one of those alternatives, then the implication is that the publication of the earlier (priority) application cannot deprive the later application of novelty under Article 54(3) EPC.
For more explanation of the issues, see the IPKat's earlier posts here and here, the excellent discussion from Tufty the Cat here, and the article by Malcolm Lawrence beginning on page 23 of in "epi Information" 1/2015, available here.
When the reasoned decision becomes available, the IPKat will let you know.
Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect.
A generic "OR"-claim is one that covers multiple alternatives without spelling them out. If such a claim can have partial priority to an earlier application that disclosed one of those alternatives, then the implication is that the publication of the earlier (priority) application cannot deprive the later application of novelty under Article 54(3) EPC.
For more explanation of the issues, see the IPKat's earlier posts here and here, the excellent discussion from Tufty the Cat here, and the article by Malcolm Lawrence beginning on page 23 of in "epi Information" 1/2015, available here.
When the reasoned decision becomes available, the IPKat will let you know.
BREAKING: Antidote found for poisonous priorities
![BREAKING: Antidote found for poisonous priorities]()
Reviewed by David Brophy
on
Wednesday, November 30, 2016
Rating:
Follow the IPKat on LinkedIn 
![[Guest post] Thou shalt not discriminate the Lego block over any other kind of product – GRUR speaks out on C-211/24](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgWJYQUJNvYydrZcjwSHPuxd14xX3_48aBusHKBogY-Wg1BPSJSABbFFjmGiUV3aqG2npP9xYaIl1vtWK5AsqGOQPgRD2TWFLhyyc4xGm1fHDD-tt9kHcrSSgAyju2P9wSKz0VW6h7D5MD4Hxd9vREyxKYzlMRNXxxtxc3DiNsXppfVaxgSxAMV/s72-c/21742619125_7c9e53cd39_o.png)
![[Guest post] Comparison of wine and gin: the EUIPO’s unquestionable Similarity Tool](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiNfTEBXiPVS0XjZi4mNE1OtXLxXiEp1PUgcUK7MMMXlfyTkO5SMXv-VCMXXNdS_F1XdMMxYca1VbBTGvvDeTVpo5x-5YwR7atQJmK3x32T8LACpf4308kht3nEtaxPwEPcGGrB0s5xjGktmQPOiVwPVLRO5JbW19qupc7xUtiVutvaWHow0OpBkA/s72-c/Picture%201.jpg)
![[Guest post] Muddying the waters of copyright – a rapid reaction to today’s IPEC decision which sees the sinking of the WaterRower’s claims for copyright protection](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEh7chFANC7ppmZl4_nlR6_hZEcg6cOhVEJNVXqki4p82BoVlcLFotuOXzHWYD5lKLiiK_kRoWeXmJjjaV2DpoKsAWq8U3LFioO5W_841a9gcfDIFjvZWcGqfnr0jWJNtyXptIYR_8bxCssaDkJ9KMokuSqy1g65Il7p2hPwo4MfRCEGoUPQJesvbg/s72-w400-c-h189/Screenshot%202024-11-11%20at%2018.20.45.png)
Posts
The jilted generation: One’s love is but only for the kittens’ kittens, and so on forward forever to the end of cat-dom – for the rest it is poison.
ReplyDeleteHello, yea, hold a sec. Battistelli there’s someone on the phone for you. Oh, f**k sake, trying to write this: jam (is only for tomorrow), man.
We have the poison,
Who has the remedy?
Who has priority’s practical remedy?
We have OR claims,
Ooh, split priorities
Which have alternatives defined countably
May be generic,
We can view sensibly
To have discrete theoretical identities?
We have the poison,
We have the referral,
For the Enlarged Board’s pontifical remedy.
We have the poison?
Who has the remedy?
We have the pressure, the pressure,
Let's see how useful G 1/15 is.
ReplyDeleteP1 discloses copper and is filed on 1.12.
EP1 is filed on 2.12, claims priority from P1, discloses and claims metal.
D1 is an EP (say by another applicant) filed before 1.12 and published after 2.12. It discloses metal. It does not mention copper.
So D1 is prior art under Art. 54(3) for EP1 and it discloses exactly what is claimed in EP1.
Tough situation. G 1/03 disclaimers are not going to be of help.
But G 1/15 saves the day.
The claim to metal is entitled to "partial priority" from P1 for the "copper" part (G 1/15).
The "remaining subject-matter", i.e. metal minus copper, is entitled to EP1's filing date (this is how T 557/13 defines "partial priority").
So the claim to metal may be viewed as an "OR"-claim with two parts:
- copper (with effective date 1.12) OR
- metal minus copper (with effective date 2.12).
The part copper is new over D1, because D1 does not disclose copper.
The part metal minus copper is new over D1, because D1 does not disclose metal minus copper.
So both parts of the OR-claim are new.
So the claim to "metal" is new over the prior disclosure of "metal" in D1.
The reasoning behind the decision is not yet know. It however looks good.
ReplyDeleteIn all the discussions on the topic of poisonous divisional, I fear one aspect fundamental to the priority system had been forgotten: the Paris Convention was created in order to avoid self-collision.
I am glad to see that the EBA found an elegant way to bring back this postulate.
nice try puzzled ;-)
ReplyDeleteBut if you read D1 in the same way than you read EP1, then the disclosure of D1 ("metal") must also be viewed as an "OR"-disclosure with two parts: copper OR (metal minus copper).
Hence, D1 still takes away novelty of claim 1 of EP1.
@puzzled
ReplyDeleteSo, the same result as in an alternative scenario where the EBoA came to the opposite conclusion on partial priority, but the two parts (copper and metal other than copper) had been explicitly written out in EP1?
I am not sure that I see a problem here. Given that EP1 (presumably) discloses both "copper" and "metal", does it not also implicitly disclose "metal other than copper"?
There would perhaps be more of an issue if EP1 differed from P1 in that all references to "copper" were removed (and replaced with "metal"). Whilst that might create headaches vis-à-vis Art. 54(3) prior art, there would at least be no "poison" (priority-entitled disclosure of "copper") to worry about when filing a divisional.
Of course, the absence of a disclosure of "copper" in EP1 could also be problematic if P1 were a published EP application... but that is an EBoA reference for another day.
"But if you read D1 in the same way than you read EP1, then the disclosure of D1 ("metal") must also be viewed as an "OR"-disclosure with two parts: copper OR (metal minus copper)."
ReplyDeleteOK, now suppose D1 does not exist, but D2 is a 54(3) document disclosing "material".
As you say, this must be viewed as an "OR"-disclosure with two parts: copper OR (material minus copper). But copper anticipates the "copper" alternative of the claim to "metal" in EP1. Or if you are allowed to choose between splitting or not, it anticipates "metal".
Hence, D2 ("material") takes away novelty of claim 1 of EP1 ("metal") because of P1.
(So no, I don't think the disclosure of D1 or of D2 may/must be "split" because of the existence of unrelated priority document P1.)
Really? So when I claim "copper", and an article 54(3) document discloses "metal", I must now lose novelty since disclosure of "metal" is said now to disclose independently "copper" and "metal AND NOT copper" Intellectually barren, say I. This could be the end of the single Gold Standard for the triumvirate of novelty, priority and added subject-matter.
ReplyDeleteI forsee this Decision placing the cat squarely among the pigeons for a good long while.
@ Anonymous Thursday, 1 December 2016 at 07:49:00 GMT
ReplyDeleteAccording to your reasoning, the generic disclosure of "metal" would anticipate the specific disclosure of any particular metal, as "metal = copper + iron + aluminum + ...". You can decompose a claim into alternatives for the sake of determining the validity of a partial priority claim, not for other pourposes.
In practice, D1 would certainly cite at least one metal other than copper, thus taking away the novelty of the "metal minus copper" branch of EP1.
How about the situation where P1 cites 'metal' and where in your EP1 you limit to 'noble metal'. Would any intermittent disclosure of 'gold' take away the novelty of EP1?
ReplyDeleteAlso here it can be said that metal is noble metal + (metal - noble metal). However, in this case the EP1 does not possess the 'or' facility any more. Thus according to G 1/15 there is no partial priority in this case?
In other words: does the 'or'-construction work in both directions?
Dear Old Observer,
ReplyDeleteIs it true that the Paris Convention was designed to simply avoid self-collision, or is it the case that it was designed to allow a person to benefit from their earlier filing in a Paris Convention country (he later filing being in any member state including the original) whilst avoiding intervening disclosures, self-made or otherwise?
In response to the comment about a priority document disclosing "copper" meaning that it discloses "copper" and "metal but not copper":
ReplyDeleteNo it doesn't - the order in G1/15 states that the subject-matter for which you want to split priority must be disclosed "for the first time, directly and unambigously in an enabling manner".
I don't see that a priority document disclosing "copper" can in any way disclose "metal but not copper" in any unambiguous way.
Equally, you might argue that - because 40 elephants are not disclosed in the priority document, the priority document discloses "not 40 elephants". Complete nonsense.
@Anon
ReplyDeleteIf it is my comment to which you refer, my suggestion was that an EP1 that discloses both "copper" and "metal" implicitly (also) discloses "metal other than copper".
I was not suggesting that the priority document in any way disclosed "metal other than copper".
I hope that this clears things up.
I'm far from convinced that we need to consider all these notional alternatives, e.g. metal but not copper. Certainly the Order doesn't require that, though we need to wait for the reasoned decision.
ReplyDeleteEveryone is starting from the eventual claim, then wondering how it can be split up to match the disclosure of the priority document(s). To me, that is the wrong way round. It's starting at the end and working backwards.
Instead of that, we should start at the beginning. Article 4A (1) of the Paris Convention shows that priority is a right which stems from the act of filing the first application. Then Article 4B explains how this priority protects you. Your subsequent application "shall not be invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention...".
Finally, Article 4F allows for partial priority. Priority may not be refused "on the ground that an application claiming one or more priorities contains one or more elements that were not included in the application or applications whose priority is claimed".
So you get priority - full or partial - merely on the basis of what subject matter your first application discloses. And for that subject matter, you are protected against acts in the priority interval. No need for notional splitting of the subsequent claim. The protection against intervening disclosures etc is governed simply by the disclosure of the priority application.
And now we have the G1/15 Order. Partial priority may not be refused "provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect."
That starts at the beginning with the disclosure of the priority application, and seems fully in accordance with the Paris Convention. OK, we need to wait for the Enlarged Board's reasons, but my bet is that they will say nothing about all the problems arising from notional splitting of the subsequent claim. If it were necessary to split the claim, that would be another "substantive condition or limitation".
@Anon of 13:55
ReplyDeleteIf you're referring to my comment, then I think you misread it.
P1 disclosing copper indeed does not disclose "metal but not copper".
But the point of the order of G 1/15 is that since metal encompasses copper, you can split the claim to metal in two parts:
- the first part is "copper" and is assigned the priority date (1.12);
- the second part is "metal but not copper" and gets the filing date (2.12).
That the second part gets the filing date follows from the order of G 1/15 which acknowledges "partial priority" to the first part in combination with the definition of "partial priority" in T 557/13. At least it seems reasonable to expect that the reasons of G 1/15 will not redefine what is meant by "partial priority".
@Proof of the pudding:
True, if EP1 explicitly discloses "metal other than copper" then the trick works anyway. But in that case the applicant benefits from something that he did disclose in his application and not from something that he did not disclose. If D1 is really identical to EP1 (except for the date), then it seems desirable that EP1 cannot be new over D1. But with G 1/15 it seems it can be new.
And if EP1 discloses copper and metal, that does not normally mean it discloses "metal other than copper". This was dealt with in G 2/10. (If it were different, then divisionals would never have been poisonous as long as everything in the priority document is contained in the EPs.)
@EPR:
You have a good point when you say that in practice D1 would (most likely) disclose some metal other than copper. But it seems my example works whenever the claim encompasses subject-matter disclosed in P1. If the claim is A and P1 discloses A+B with B a quite specific feature, then D1 disclosing A will likely not disclose A positively not having feature B.
@Bart van Wezenbeek:
I don't think it works both ways. But your example confirms that splitting subject-matter, if allowed, can lead to strange results.
@Tim Jackson:
ReplyDeletePriorities work differently from what you seem to think.
Art. 87(1) EPC states that a priority right only exists for the "same invention".
The effect of a (valid) priority right is fully determined by Art. 89 EPC: only prior art published before the priority date is included in the state of the art for that claim.
A "partial priority" right is exactly this, except that you first split the claimed subject-matter in two or more parts and consider each part separately. So each part may have its own effective date for determining the state of the art for the purpose of novelty and inventive step.
In proceedings before the EPO, only the priority provisions in the EPC are relevant: Art. 87-89 EPC. (But they do not deviate from the Paris Convention. The right of priority applies only to the same invention also in the Paris Convention, even if that is not stated all that clearly.)
"Art. 87(1) EPC states that a priority right only exists for the "same invention."
ReplyDeleteSure. So if the whole subject matter of the claim is found in the priority document, it has a full priority.
And if a part of the subject matter of the claim is found in the priority document, it has a partial priority -- to the extent that it is the same invention. Article 88(3) EPC: "...the right of priority shall cover only those elements of the European patent application which are included in the application or applications whose priority is claimed."
The extent of the protection provided by the priority is therefore governed by the disclosure of the priority document. That's how priority works.
So suppose priority application P1 discloses copper, P2 discloses metal, and the subsequent European application claims metal:
-- Copper has a partial priority P1, under Article 88(3) EPC. Paris 4B requires that the claim be protected against disclosures of copper on or after the date of P1. To do so, Article 89 EPC says that the effect of the (partial) priority for copper is that the date of P1 counts as the date of filing of the European application. But it's only the date of filing insofar as the application relates to copper, because that's all that the partial priority covers, and all that P1 discloses.
-- Metal has priority P2. The claim is protected against disclosures of any metal, e.g. aluminium, on or after the date of P2. It's not protected against a disclosure of aluminium before P2. This is a normal full priority, not partial, and operates quite separately from any partial priority for copper.
-- And the notional part "metal but not copper" is irrelevant. It's just a hypothetical construct. It doesn't have any priority. You don't need to consider it.
You will see that I disagree with your statement that the point of the order of G 1/15 is that since metal encompasses copper, you can split the claim to metal in two parts. I don't think it says that at all. It just says that the partial priority for copper may not be refused, provided copper is properly disclosed for the first time in P1.
So why do people insist on considering the hypothetical alternative "metal but not copper"? Even though it has no priority, and even though priority for it is not needed? The only reason I can see is the proviso to point 6.7 of G2/98. That requires there to be a limited number of clearly defined alternatives, for which "metal but not copper" is a candidate.
However, that would be an additional "substantive condition or limitation", which the G1/15 Order says does not apply. I suspect that when we see the reasoned decision, it will overturn the proviso to point 6.7, either completely, or at least as far as generic-OR claims are concerned.
Puzzled: so if I split the claim when a partial priority document is in play, what subject-matter do I consider (i.e. what is the "invention") for assessing patentability in respect of disclosures made before the priority date? The whole claim, the bit not entitled to priority, or the bit entitled to priority?
ReplyDeleteAnother strange situation may occur according to the following example:
ReplyDeleteP1 discloses a process in a temp range of 0-50 degrees Celsius.
P2 discloses that same process in a temp range of 50-100 degrees Celsius.
The EP application only claims and discloses a process from 0-100 degrees Celsius.
I should be entitled to claim partial priorities, but would changing my claim into a claim with a specific 'or' construction be allowed under Art. 123(2) if none of the substes was explicitly disclosed?
As can be gathered from this example and from all of the previous examples in the comments, the issue is still not clear and much will (hopefully) become clearer when the decision is out. To my opinion the explanation of the term 'implicitly' will appear to be pivotal.
@Unconvinced:
ReplyDeleteGood question... perhaps the reasons of G 1/15 will answer it.
For now, I would say that if the subject-matter of the claim is split in two parts, each having its own effective date, then each part will have it owns collection of citable prior art and will thus have to be examined for novelty and inventive step separately from the other part.
@Bart:
Your claim will have two parts with two dates, but I don't think you will be allowed to rewrite it with an explicit "or" introducing "50".
@Tim:
ReplyDelete"P1 discloses copper, P2 discloses metal, and the subsequent European application claims metal"
The claim to metal will have the date of P1 for the part "copper". The "remaining subject-matter", which is metal minus copper, will have the date of filing.
So this is one conceptual rewrite: metal = copper OR (metal - copper).
Metal has priority P2, but that does not help much after the conceptual rewrite. (*)
The notional part "metal minus copper" certainly is important.
There are three ways to rewrite the claim:
1. metal = copper (P1) OR metal minus copper (application)
2. metal = copper (P1) OR metal (P2).
3. metal = metal (P2)
A disclosure of copper between P1 and P2 is not novelty destroying for the first rewrite: it is not prior art for "copper" and it does not take away novelty of "metal minus copper".
The same disclosure is novelty destroying for the second and third rewrites: it is prior art for "metal" and it takes away novelty of "metal".
A disclosure of iron between P2 and the filing date of the application is novelty destroying for the first rewrite: it is prior art for and anticipates "metal minus copper".
The same disclosure is not novelty destroying for the second and third rewrites: it is not prior art.
So rewriting can help and rewriting can hurt. Who gets to choose the rewrite?
(Of course the second rewrite has no benefit over the third rewrite. The "metal" part with the date of P2 is always more vulnerable than the "copper" part with the date of P1.)
You wrote:
"-- Metal has priority P2. The claim is protected against disclosures of any metal, e.g. aluminium, on or after the date of P2."
No, you should not look at the content of disclosures but only at their date. If you view the claim as claiming "metal" with priority P2 (third rewrite), then the claim is protected against ANY disclosure with the date of P2 or later. And at the same time, the claim is NOT protected against any disclosure coming before P2. It all turns on "effective date".
"You will see that I disagree with your statement that the point of the order of G 1/15 is that since metal encompasses copper, you can split the claim to metal in two parts. I don't think it says that at all."
But the order of G 1/15 does say that. To see that you have to read it together with the definition of "partial priority" given in T 577/13: the expression "partial priority" is used by the Board in a narrow sense ... to refer to the situation in which part of the subject-matter of a claim is entitled to the priority date of a single earlier application, whereas the remaining subject-matter is entitled only to the filing date of the subsequent European patent application.
If copper is in P1, then the remaining subject-matter is "metal minus copper".
(*) We can complicate things further by arguing as follows. P1 is the first application for "copper". So the priority from P2 is invalid for copper and only valid for metal minus copper. And now, arguably, you can have a partial priority from P2 for "metal minus copper". This goes against the letter of the order of G 1/15, though: "provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously ... in the priority document". P2 does not disclose "metal minus copper". But it might fit with the logic of G 1/15's reasoning.
Puzzled: "There are three ways to rewrite the claim: [...]
ReplyDeleteSo rewriting can help and rewriting can hurt. Who gets to choose the rewrite?"
There's a much better fourth way. Don't try to rewrite the claim. It's not necessary, and it only causes the problems you are struggling with.
The G1/15 Order says that entitlement to priority may not be refused for these reasons anyway. The only reason it could be refused is if the priority application doesn't disclose the relevant subject matter properly.
So all you need to do is to look at the disclosure of the priority application. If you find the subject matter there, then it gives rise to a priority. The subsequent claim is protected against novelty attacks based on intervening disclosures of that subject matter.
Thus, disclosures of copper on or after the date of P1 do not destroy the novelty of the claim. And disclosures of any metal after the date of P2 do not destroy its novelty either.
If you start saying "yes, but only if you split the subsequent claim in a certain way," then that introduces a further substantive condition or limitation. The G1/15 Order says you mustn't do that.
Puzzled: "But the order of G 1/15 does say that" [i.e. to split the claim into two parts.] "To see that you have to read it together with the definition of "partial priority" given in T 577/13"
Why do I have to do that?
Firstly, you are supposing that when we see their reasons, the Enlarged Board will agree with the definition given in the referring decision T 577/13. We don't know that.
Furthermore, T 577/13 referred to "the remaining subject matter" being entitled only to the filing date. The Board wasn't looking to determine the priority date of the remaining subject matter under Article 87-89 EPC. There was no application P2.
So anything which didn't have the single priority date P1 just automatically had the filing date of the European application under Article 80 EPC, with no need to consider whether it had basis in a priority document. In a simple partial priority situation, there's no need to consider "metal but not copper".
Now let's consider your claim for "metal" in relation to application P2, which discloses metal. There's a priority for "metal", and the date of P2 counts as the date of filing of the European patent application (Article 89 EPC). Having got that, we are now back to a simple partial priority from P1 in respect of copper. As above, there's no need to consider "metal but not copper".
All I've done here is to consider the disclosures of P1 and P2, as instructed by the G1/15 Order. They disclose copper and metal respectively. That's all that matters.
Puzzled, let me return to your footnote. You make a valid point about P2 not being the first application, insofar as it relates to copper (which is disclosed in P1).
ReplyDeleteHowever, I think this too is dealt with if you just start at the beginning, with the disclosures of P1 and P2, as seems to be required by the G1/15 Order. That's instead of starting by trying to split the claim up, then asking which bits have what priority.
P1 gives priority for copper. Whatever the claim says, it is shielded from disclosures of copper on or after the date of P1. Paris Article 4B describes the shielding effect of filing P1: "Consequently, any subsequent filing ... shall not be invalidated by reason of any acts accomplished in the interval... [1]
P2 gives priority for metal. If you ignore P1 for a minute, then whatever the claim says it is shielded from disclosures of any metal on or after the date of P2.
The "not the first application" effect of P1 is that the shielding given by P2 has a copper-shaped hole in it. No problem, since it is exactly matched by the shielding effect of P1. If there's a disclosure of aluminium after P2, the claim is shielded by P2. If there's a disclosure of copper after P2, it's not shielded by P2, but it is shielded by P1. [2]
You will say that a "copper-shaped hole" is the same as saying "metal minus copper". Yes, but it's only a hole in the shielding effect of P2. It's not a hole in the claim. And despite the hole, P2 still shields against all other metals.
So you don't need to split the claim into notional parts, and then try to ascribe a priority date to a hypothetical "metal minus copper" part. That's because we've started at the beginning, with the disclosure of P1 and P2, rather than starting at the end with the claim and trying to split it up.
And I'll repeat: the G1/15 Order says that the disclosure of the priority document is what you should look at. No other conditions or limitations apply.
Finally, maybe you will say that we should consider Article 89 EPC to determine the effect of the priority. It doesn't explicitly mention a shielding effect. Instead, it says that the date of the priority application counts as the date of filing of the European application. In my view, that is simply a mechanism for implementing the shielding required by Paris Article 4B ("Consequently, any subsequent filing ... shall not be invalidated by reason of any acts accomplished in the interval...). You should still start with the disclosure of the priority application when deciding which subject matter it applies to, rather than worrying about notional claim splitting.
---------------
[1] The claim is shielded for novelty purposes. There would be an issue if there's a publication of copper between P1 and P2, and that publication makes it obvious to use another metal such as aluminium. But that's not relevant for disclosures under Article 54(3) EPC.
[2] Unless P1 was filed more than 12 months before the European application, as in T1222/11.
@Tim:
ReplyDeleteThe subsequent claim is protected against novelty attacks based on intervening disclosures of that subject matter.
You can keep insisting, but this is simply not how priority works under the EPC.
If one part of an OR-claim has a particular priority date as effective date then that part is protected against intervening disclosures of ANY subject-matter: the state of the art for that part is limited to publications occurring before the priority date.
For each other part of the OR-claim you have to determine the state of the art for that part according to the effective date of that part.
Each part has its own effective date, its own state of the art, and consequently will have to be examined for novelty and inventive step separately.
If one part falls, the claim falls.
Now the "partial priority" thing is about the ability to assign different dates to different parts of the subject-matter of a claim. G 1/15 says that if the claim encompasses subject-matter disclosed in a priority document, then that subject-matter gets the corresponding priority date and the "remaining subject-matter" is still entitled to the filing date. Now of course it will be possible to repeat this exercise with a second priority document. But the end result will always be a conceptual rewrite of the claim into an OR (union) of subject-matters, each subject-matter having either the date of a priority document or the filing date.
Puzzled: "You can keep insisting, but this is simply not how priority works under the EPC."
ReplyDeleteSo you keep insisting! But it seems to be how priority works under both Article 4B of the Paris Convention and the recent Order in G1/15. As long as it's properly disclosed in the priority document, priority cannot be refused, and no other conditions or limitations apply.
Assigning different priority dates to different subject matter is fine, as long as you only do it on the basis of what the priority document(s) say. But not if you are trying to assign a priority date to an artificial construct like "metal minus copper", which doesn't have a basis in any priority document. That gives results which are clearly wrong, such as saying that a publication of aluminium after P2 invalidates the claim, despite P2's generic disclosure of metal. I'm absolutely sure that that's not how priority works under the EPC.
I don't think rewriting or splitting the claim artificially had any basis in EPC law prior to G2/98, which included the proviso to paragraph 6.7. That proviso is what required you to see if you could split the claim into a limited number of clearly defined alternatives. Subsequent cases developed how you should perform the split, eventually resulting in poisonous priorities. T1222/11 and T0571/10 then tried to rescue the position, by proposing that the alternatives could be (in your example) "copper" and "metal minus copper".
The referral G1/15 effectively asked the Enlarged Board whether that was indeed how priority should work under the EPC:
-- Question 1 asked if there should be any conditions at all, apart from the disclosure in the priority document. We have a clear answer: "no".
-- Questions 2-4 then asked what the conditions should be, if the answer to Question 1 was "yes". Should we rewrite the claim to split it into a limited number of clearly defined alternatives, and if so how? Or should there be something else instead?
But G1/15's answer to Question 1 isn't "yes". So Questions 2-4 are irrelevant. We shouldn't be trying to rewrite the claim with artificial alternatives like "metal minus copper".
You've noted that the G1/15 Order doesn't tell you how to rewrite or split the claim. Is it not possible that when we see the reasons, they will say that rewriting or splitting the claim isn't what you should do? That that's not how priority should work under the EPC?
Is it not possible that when we see the reasons, they will say that rewriting or splitting the claim isn't what you should do?
ReplyDeleteIs it possible that the EBA issues an order today with one meaning (relying on the referral's definition of partial priority) and then issues reasons some weeks or months later that completely change the meaning of today's order (by redefining partial priority)?
In my view that is not a realistic possibility.
The EBA is supposed to answer the questions referred to it. In this case it answered question 1 with "no". If it had meant to answer a different question with "no" then that should have been clear already from the order.
That a "no" to T 577/13's question 1 seems to lead to surprising results in specific circumstances may be true, but that did not bother T 577/13 and it might not bother G 1/15 either. On this point the reasons will tell us more.
Interesting how a short answer of the Board ("no") can be open to many different interpretations as to its meaning and effect.
ReplyDeleteDoes this not all boil down to what should be understood under the term "generic 'OR' claim"?
G2/98 states (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) EPC, second sentence, is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters."
With clearly defined alternative subject-matters being present, there can be partial priority. With the proviso, as given now by the Board, of the alternative subject-matter having to be properly disclosed in the priority application. (What a surprise!)
Without clearly defined alternative subject-matters, there is bad luck. Whether a "poisonous" situation, or not.
So, does anyone know why the reasoned decision has still not been issued? I heard that the text is merely awaiting language scrubbing, but it should have been ready "within a few days". Any insights?
ReplyDeleteThe full reasoned decision is now available:
ReplyDeletehttps://register.epo.org/application?number=EP98203458&lng=en&tab=doclist