2 Feb 2017

G 0001/15 - Partial priority (full decision)

Update - full decision now available
at http://www.epo.org/law-practice/case-law-appeals/recent/g150001ex1.html




Order of the Enlarged Board
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.



https://register.epo.org/application?number=EP98203458&documentId=EZRVZZP16932684&lng=en


EPO G 0001/15; G 1/15; EPO G1/15;


7 comments:

  1. In G1/15 (Reasons, point 5.2.1), the Enlarged Board states: that “The Memorandum also indicates advantages of allowing multiple and partial priorities, including the avoidance of claim proliferation and possible disadvantages in national post-grant procedures.”

    The Memorandum actually states as follows:

    If the applicant is not permitted to claim multiple priorities for his principal claim, he cannot claim any priority at all for that claim, not even the second priority because the second application was not the first to disclose the use of a halogen. In order to secure his priority rights he will then try, as the possible remedy, to draw up four sub-claims, each directed to one of the members of the halogen group. The first of these claims will enjoy the first priority and the following three claims will enjoy the second priority.

    However, experience in many European countries shows that this type of sub-claims will not be allowed. They will be rejected as frivolous, as just being an exhaustive list of the halogens which any school boy can find in his elementary text book.

    But if these sub-claims are so rejected, and multiple priorities for the first claim are not permitted, the applicant has entirely lost his priority right, which is contrary to the Paris Convention.

    In other words, in order to comply with the Paris Convention in the case considered it will be necessary either to allow multiple priorities for one and the same claim, or to allow claims which on the face of it are frivolous, but in face serve the perfectly legitimate purpose of claiming multiple priorities. This will create towards multiplicity of claims which it may be difficult to keep in check.

    Let us now examine what happens if the applicant lets himself be coerced into abandoning the sub-claims to chlorine, bromine, iodine and fluorine, thus maintaining only the halogen claim, and his European patent later comes before a national court in a situation where an alleged infringers is able to prove that there has been public use of the invention (maybe the patentee’s own use) between the second priority date and the actual filing date of the European patent application.

    If, under the national law of the country concerned multiple priorities for one and the same claim are not allowed, the patent will be declared invalid, but if multiple priorities for one and the same claim are allowable, the patent will be declared valid.

    Similarly, if public use of the chlorine embodiment is proved to have taken place between the two priorities dates, the halogen claim will be declared invalid in a country of the first type, and valid in its entirely in a country of the second type.

    If public use of all four embodiments is proved to have taken place between the two priorities dates, the halogen claim will again be declared invalid in a country of the first type, while in a country of the second type, it will, in accordance with Art.138(2), be limited to the chlorine embodiment.

    Such difference between decisions on the same validity issue under Art. 138(1)(a) in different Contracting States obviously should not be tolerated.


    According to the statement of the Memorandum, the effect of partial priority is avoiding not only for novelty attacks but also for inventive step attacks.

    What do you think?

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  2. I guess the FICPI Memorandum indeed assumes the " shield" effect of priority in para. 23. G 3/93 of course is ruling case law. G 3/93 does not cite the Memorandum. The Memo is not about whether or not to accept the shield effect, or to restrict the effect to the "redate" approach. The redate approach follows quite directly from the wording of Article 89 EPC, which is of course rather different from Article 4(B) Paris Convention. Interetingly, in fact only public prior use is considered as thing to happen during the priority interval in the Memo (at least at 21-25). The Memo can be found here: http://www.dvarim.fr/law-practice/Memorandum.pdf

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  3. Thank you very much for your comment. Your analysis is quite objective and reasonable.

    In G1/15 the Enlarged Board cites T 665/00. In T 665/00 the alleged intervening act was public prior use. The Board recognized partial priority, and the patent was maintained.

    I guess the Board in T665/00 understand the effect of the priority as the "shield" effect.

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  4. in T 665/00, the Board did not decide on inventive step over the alleged public prior use in the priority interval, because that public prior use was held to be not proven. In so far, the discussion of partial priority in connection with novelty was obiter.

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  5. Thank you for teaching me kindly. It is heavy task for me, Japanese to read the decision in French.

    Actually the Board stated that “Par conséquent, les moyens de preuves apportés par la requérante, par l'imprécision des faits qu'ils évoquent ("lancement", "sortie") et par l'absence d'une donnée précise quant à la masse volumique des microbulles, laissent subsister un doute, tant sur l'accessibilité au public aux dates invoquées par la requérante (1986 et mai 1987) du produit "Poudre Majeur", que sur les caractéristiques techniques de ce produit". (At the end of point 2.1)

    However, the Board also stated that “En tout état de cause, la Chambre dans le souci de trancher de façon exhaustive les objections soulevées par la requérante au sujet de l'usage antérieur, est arrivée à la conclusion que même si le présumé usage antérieur public avait été retenu, il ne saurait être préjudiciable à la nouveauté des objets revendiqués dans le brevet litigieux (point 3) ". (At the end of point 2.3)

    Even obiter dictum, the Board should have considered not only novelty but also inventive step.

    By the way, how about is T 1877/08? This case also questioned about not Art 54(3) but Art 54(2). Partial priority was not recognized. However if it had obeyed the provision in G1/15, partial priority would have been recognized. In that case, would the result have changed? I care about question of inventive step.

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  6. As to T 0655/00, the reasoning about inventive step in view of the (non-proven) public prior use is in 6.1, first sentence. It does not need to be discussed because the prior use is not proven. As to T 1877/08, I understand that partial priority had been accepted, the document at issue would have been a prior right for novelty only (Article 54(3) EPC).

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  7. As to T 1877/08, “The Appellant cited document (2) in the proceedings as representing the closest state of the art in the ASSESMENT of INVENTIVE STEP”. (point 2.1)

    With regard to an alternative disclosed in the priority document, namely a blend of from 30 to 55 percent by weight of chlorodifluoromethane, from 35 to 65 percent by weight of pentafluoroethane and from 2 to 10 percent by weight of propane, document (2) cannot destroy the novelty under Article 54(3) EPC.

    How about the added alternative, namely a blend of from 55 to 65 percent by weight of chlorodifluoromethane, from 65 to 69 percent by weight of pentafluoroethane and from 1 to 2 percent by weight of propane?

    Can the document (2) destroy the inventive-step of the added alternative?

    Or, is document (2) not a prior art document pursuant to Article 54 (2) EPC for the added alternative?

    The latter seems to be more consistent with the Article 4B of the Paris Convention.

    Consequently, any subsequent filing in any of the other countries of the Union before the expiration of the periods referred to above shall NOT BE INVALIDATED by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention, …

    G3/93 seems to be limited to the AND-claims which it actually considered, and doesn't apply to OR-claims.

    Because the question referred in G3/93 reads as follows:

    "Does a document published during the priority interval and whose technical contents correspond to that of the priority document constitute prior art citable under Article 54(2) against a European patent application where the claim to priority is NOT VALID because said application comprises subject-matter not disclosed in the priority document?"

    The question in G3/93 is concerning case in which priority is not recognized at all. On the other hand, generic “OR”-claim is proved to (partially) valid in G1/15.

    ReplyDelete

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