1 September 2017

Comments on Mr Shibata's article in EPI information 2/2017

The article " Reconsideration of G3/93 “Priority Interval” from the Perspective of G1/15 “Partial Priority”" of Mr Shibata in EPI Information 2/2017 deserves some comments.


The article points to paragraph 23 of the FICPI Memorandum about partial priority. Here the case is considered wherein (simplified) the priority document discloses chlorine, the application claims halogen, and public prior use of the chlorine has occurred in the priority interval. Now, with partial priority, the claim is said to be "valid in its entirety". However, the public prior use of chlorine renders the alternative with bromine obvious (that this alternative is obvious, follows from paragraph 8 of the Memo). Furthermore, the Memorandum indicates that if the public prior use was also of the bromine embodiment, then the claim would be invalid for the bromine embodiment (paragraph 24).
See by the way this comment of kaz-xmas on another blog.

Hence, the FICPI memorandum seems to assume the shield effect of the priority for chlorine for publication of that embodiment in the priority interval, i.e. such publications can not be cited, also not for the embodiments with bromine. On the other hand, any publication of the bromine embodiment can be cited. Hence, the priority of the chlorine embodiment does not extend to the bromine embodiment, renders the chlorine publication uncitable even for the bromine embodiment lacking priority.

Mr Shibata then proposes (as I understand it) that in case of partial priority, the part of the claim not covered by the partial priority, should benefit from the "shield effect" of the priority document. 

Mr Shibata's argument is interesting, but in my opinion not fully convincing. Article 89 EPC quite simply states that the effect of priority is the date of priority "shall count as the date of filing".  The FICPI Memorandum provides the legislative intent of Article 88(2) and (3), which are about the requirements (and limits) for claiming priority. In particular paragraphs 1-32 of the Memorandum are specifically about Article 88(2), second sentence "multiple priorities may be claimed for any one claim". The Memorandum does not engage with the quite clear statement of the effect of priority, even though the "shall count as the date of filing" wording was used from the outset of the drafting, see e.g. IV/5569/1/61-D in the travaux and the Avant-Project draft version (VE 1965; edit: possible link; page 17). 
Therefore, I do not think that it can be said that the FICPI Memorandum is clear enough to establish that it was the legislative intent to have a shield effect in case of OR claims.

In particular, for the shield effect, it should not matter if "halogen"  was claimed or simply "bromine" alone. There is also no logical ground why the shield effect would depend on whether an equivalent is claimed (such as bromine), or "chlorine + obvious feature B). However, then priority would provide protection for AND claims, and that is (unambiguously) rejected in the Memorandum (page 2, top). 

Finally, Mr Shibata is not entirely accurate where he says that "scope of the referral in G3/93 was "AND"-claim". The scope of the referral (by the President) was an application that  "comprises subject-matter not disclosed in the priority document". G 3/93 uses the example of an AND claim in point 3, but the following analysis is not so restricted and refers to priority that is invalid because the application "claims subject-matter not disclosed in the priority document". That clearly encompasses not only AND claims, but also equivalent (chlorine vs. bromine), and irrespective of whether a claim is entirely directed to such undisclosed subject-matter or only in part (a claim for chlorine OR bromine, or a claim for halogen).

Of course, one can maintain that G 3/93 is wrong in the sense that the shield effect of priority ought to be recognized by the EPO. Of course, priority needs to give not only the shield effect, but also the redate effect to protect against publications of equivalent embodiments during the priority interval), and for the redate effect there needs to be a limit on the protected subject-matter. Furthermore, the redate effect alone is sufficient to implement Article 4B of the Paris Convention, if one assumes that the effect of priority extends only to the same subject-matter in the later application. Mr Shibata challenges also that - citing Wieczorek, page 156. However, I do not find the remark of Wieczorek very convincing: the fact that some subject-matter does not form a second invention (but an obvious equivalent), does not mean that it is the same invention. Hence, Article 89 EPC and the redate approach are not irreconcilable with the Paris Convention.

Addendum 04.04.2020: see also T680/08, T665/00 and T1443/05 mentioned by Bremi in Singer/Stauder/Luginbuhl 8th ed. (2019) Art.89 rdn. 9 fn.11 and Mitt. 2006 p.490 (these decisions appear to actually deal with partial priority, G1/15). 

7 comments:

  1. First of all, I would like to say thank you very much. As few people give comments on this topic, namely effect of priority right, I am very pleased with your comments.

    With regard to the scope of the referral, I can understand the analysis by G3/93 is not restricted only to AND claims. Rather, I think that G3/93 denied partial priority not only for “AND” claim but also for “OR” claim.

    In fact, G3/93 cited In re Gosteri, in which entitlement to partial priority was refused for a Generic “OR” claim (Markush type claim) because the application comprises subject-matter not disclosed in the priority document.

    The UK Patents Court in Beloit v Valmet followed the judgement of Gosteri case through G3/93. The court stated that “Section 6(1) of the Patents Act 1977 did not carve out from the state of the art matter made available to the public in the priority interval just because that matter was in the priority document.”

    The synergy of G3/93 and Beloit v Valmet produced the proviso by G2/98 which is “provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters”. I think that the trigger of poisonous priority was not only G2/98 but also G3/93.

    G3/93 stipulated that “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. ” It does not seems to consider the partial priority at all. At least this stipulation is contrary to the order of G1/15. I understand that the stipulation by G3/93 was overruled by G1/15.

    I cannot comment on the legislative intent enough because I do not recognize VE 1965, but I can point out that G1/15 emphasized advantages of allowing multiple and partial priorities as the avoidance of possible disadvantages in national post-grant procedures (point 5.2.1).

    Finally I would like to comment on the Paris Convention.

    I can agree that the redate effect alone is sufficient to implement Article 4B of the Paris Convention. However the redate effect is not sufficient to implement Article 4F and Article 4H of the Paris Convention. It is clear from the authentic language (French) of the Paris Convention that Element means not only to embodiment but also to feature. You paid attention to this matter in your blog before.

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    1. The document VE1965 is in http://www.epo.org/law-practice/legal-texts/epc/archive/epc-1973/traveaux.html, Article 89, page 17 of the PDF file.

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    2. Regarding the meaning of "elements" in the authentic French text of the Paris Convention, the remark is in the post about T 1506/11. However, currently I think that the term could also mean " embodiments", but writing out that analysis will take some more time.

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    3. I agree with you. I do not intend that the meaning of “elements” excludes “embodiments”. Rather I think elements correspond both embodiments and features. I wrote this matter in AIPPI journal nine years ago. Please see upper left column in page 289.
      https://www.dropbox.com/s/zo9utmcyavtm71z/AIPPI%20Journal%2C%20September%202008_p275.pdf?dl=0

      I appreciate that you provide me with VE1965. It does not appear to discuss directly between fiction theory and umbrella theory, but rather it appears to discuss on swearing back of a reference in context of Hilmer doctrine in US. In 1970’s the US gradually became to handle differentially US application and foreign application. Typical example was Kawai v. Metlesics in which the best mode was required.

      In 1960’s in re Ziegler it was possible to swear back to date of conception of the invention by relying on priority under the Paris Convention. It had same effect of partial priority. However, after that Kawai decision was rendered, and the reasoning of In re Ziegler was overwritten by In re Gosteli. The Court of Appeals for the Federal Circuit stated, as the reason therefore, that a priority document must support the entire claim of a subsequent US application prescribed in 35 U.S.C. Section 119. It meant to deny claiming multiple /partial priorities for a single claim. Now the United States does not allow multiple priorities for a single claim even if it is Markush type claim. I wrote these US cases in the AIPPI journal. Please see pp.278-283.

      In re Gosteli affected the G3/93 opinion. G3/93 actually cites in re Gosteli. This idea seems to be continuous to the proviso "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters” instructed in G2/98.

      These series of phenomena seems to have led to poisonous priority hypothesis.

      By the way, VE 1965 explains a priority contest procedure between Mr. Nilsson and Mr. Johnson by using the expression “elements for A+B+C in combination”. (Page 22/91) In this context is clear that elements means features. G3/93 also uses same expression.

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    4. In the travaux, pages 18-27 of the PDF file are one document from 1969, reverse order of the pages, indeed discussing unequal treatment with USA. The VE 1965 document is on pages 16 and 17.

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  2. As to Article 4H Paris Convention, I think that it should be interpreted as follows: " Priority may not be refused on the ground that certain [embodiments] of the invention for [which embodiments] priority is claimed do not appear among the claims formulated in the application in the country of origin, provided that the application documents as a whole specifically disclose such [embodiments]."
    Wherein "embodiment" means a combination of features, e.g. features A+B+C. An embodiment may be the subject-matter of a claim, but can also be disclosed in the description. Article 4H stipulates that priority can also be based on embodiments that are only described in the description of the description and that are not claimed. For instance, if all the claims are directed to embodiments with A+B (+ preferred further features), and the description says that instead of feature B, also feature B' can be used. The priority application then also supports priority for embodiments with A+B'

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    1. Yes! Your thinking of Article 4H is possible as interpretation of literature, and is only way in order to be consistence the Paris convention with the EPC.

      However, I think that at least the intention of legislator of the PC was different from the interpretation. Looking at pages 256, 369-370 of London Conference documents, it is natural to interpret elements as features.
      ftp://ftp.wipo.int/pub/library/ebooks/wipopublications/London_1934.pdf

      For example, if looking at the counter proposal of Swiss at page 256 or discussion on elements and figures at page 369, elements seems component pieces rather than embodiments.

      Lisbon Conference documents also can be proof.
      ftp://ftp.wipo.int/pub/library/ebooks/wipopublications/Lisbonne_1958.pdf

      At page 343, the delegation of the Netherland stated as follows:
      De plus, il n'est pas souhaitable de parler d'éléments nouveaux, parce que le mot «nouveau», dans le domaine du droit de brevet, a la signification spéciale de « nouveau par rapport à l'état de la technique ».

      If elements were embodiments, the expression “éléments nouveaux” of BIRPI proposal text would not have any problem at all. Rather at least an inventor believes that “éléments” is “nouveaux” when filing patent under partial priorities.

      Because elements mean features, the expression “éléments nouveaux” was inappropriate.

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