T 0195/25 - Partial priority and the shield effect of priority (?)

Key points

• The Board, in the headnote: "When a claim of a patent enjoys partial priority for a specific embodiment, the same embodiment disclosed in a non-patent document published in the priority year cannot be used as starting point for an inventive-step attack against the subject-matter of the claim that does not validly claim priority".
• Compare G 3/93: "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. 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."
• Hence, the headnote in T 195/25 is surprising because it appears to introduce the 'shield theory' of priority, which was rejected in G 3/93 (as I understand that case). 
• See my blog post of 01.09.2017 (link). 
• See also T 2466/13, issued in 2018, wherein, in translation: "The chamber uses [priority] document Prio01 as a starting point to examine the inventive step of subdomain B of claim 1.") (link)
• Turning to the case at hand, D12 is the PhD thesis of one of the inventors and was published during the priority year, 
• The present Board: " The appellant considers the examples in PhD thesis D12, ... an alternative starting point for assessing inventive step. "
• "Since D12 was published after the filing date of D11, D12 has no impact on the priority date of the patent.
• "However, when a claim of a patent enjoys partial priority for an embodiment, the same embodiment disclosed in a non-patent document published in the priority year cannot be used as a starting point for an inventive-step attack against the subject-matter of the claim that does not validly claim priority.
• This is a new statement of the law, I think.
• "3. ... It has not been contested that the priority is at least partially valid (see G 1/15), i.e. as far as the examples of the patent are concerned 
• The examples are the same between the priority document and the application. Implicitly, the examples are also embodiments of the claim under examination.
• Importantly, the cited examples in D12, the PhD thesis, are the same as in the priority document.
• "In the case in hand, the subject-matter of the examples of non-patent document D12 does not belong to the state of the art within the meaning of Article 54(2) EPC since D12 was published after the priority date of the patent (see point 3. above)."
• This statement departs from the established case law.  Under G 1/15, the priority is "entirely" valid for one part of the claim and "entirely" invalid for the other part of the claim, just as when the claim explicitly recites two alternative embodiments, one with priority and one without ( G2/98)
• The Board: "4.3 This finding is in line with the principles of e.g. T 2073/22 (Reasons 9.6.3 and 9.6.4), T 1482/21 (Reasons 2.4.2) and T 211/06 (Reasons 4.1 and 4.2)."
• Let's check the references.
• T 2073/22: ", the board notes that, as pointed out by the respondent, the appellant explicitly stated in its grounds of appeal (page 30, point 10.96) that it "made no inventive step objection to phenols specifically".  ...  " Therefore, D1 is prior art under Article 54(3) EPC for the subject-matter of claim 1 as granted objected to by the appellant. ". The Board did not examine the patentability of the other subject-matter of the claim of its own motion.
• T 1482/21: "in view of the Board's conclusion on the partial validity of priority as set out above and the limitation of the claimed subject-matter in the new auxiliary request to subject-matter for which priority can be validly claimed...  D24/D27 are not prior art for this subject-matter, since they were published after the filing date of P1 and P2."
• T211/06: "the starting points applied to in the decision under appeal for the purposes of Article 56 EPC are based either on internal art or on a practice argued by the examining division to be known to the skilled person, for which there is no evidence on file that it was available to the public before the priority date." "According to the impugned decision another starting point was based on a so called "laboratory practice" or "common industrial practice" ...  "There is however no evidence on file at all that this "laboratory practice" was made available to the public and concerns state of the art under Article 54(2) EPC. This would be using a subjective starting point, which cannot be objectively assessed, since it is not based on reliable technical information based on evidence as required by Article 54(2) EPC. "
• None of the three cited decisions seems to address the point or support the present Board's position.
• The present Board: "By contrast, T 307/22 (Reasons 3.4.1, 3.4.4 and 3.5.4 to 3.5.5) concerned an embodiment disclosed both in D7, a document published in the priority year, and in priority document D8. It held that the embodiment of D7 could be used as the starting point for assessing inventive step. This is not indicated in the circumstances of the present case. For the reasons given above, only the subject-matter of the prior art within the meaning of Article 54(2) EPC can be used for an inventive-step attack."
• See my post on T 307/22.
• The current Board's remark that "This is not indicated in the circumstances of the present case" seemingly means that T 307/22 is wrong because the current Board analyses the effect of priority differently. 
• The present decision does not refer to G 3/93.

EPO 

The link to the decision is provided after the jump.

T 2342/22 - Partial priority and generic intermediate art

Key points

• Claim 1 is a second medical use claim for a combination therapy. Claim 1 has partial priority for only one embodiment. In particular, the priority document discloses only an embodiment with a specific order for administering the medicines. 
• D9 is a conference paper published in the priority year. It teaches the medical use (the method of therapy), but not the order of the administration. D9 does not specify the order in which the components of the combination therapy were administered to patients. 
• Is claim 1 novel over D9?
• According to the Board, yes, because "Since document D9 fails to disclose an order of administration not covered by the partial priority right conferred by the disclosure in [the priority document], the board considers that the disclosure of document D9 cannot anticipate the subject-matter of claim 1 within the meaning of Article 54 EPC."
• Hence, to anticipate the claim, D9 should have taught an embodiment that is unambiguously outside the part of the claim for which the priority is valid (and that is, also, in accordance with the claim).
• However, the claim is not inventive over D9 as the CPA. 
• "Starting from document D9 as the closest prior art, which discloses the use of a FITC-tagged adapter molecule in combination with AT-CAR T cells but does not specify an administration regimen, the skilled person would recognise that document D9 leaves open three alternative possibilities: administering the tagged adapter molecule prior to, simultaneously with or after the AT-CAR T cells. ... The arbitrary selection of one of them does not involve an inventive step."

EPO 

The link to the decision is provided after the jump.

T 0518/22 - Disclaimers and partial priority

Key points

• Partial priority and undisclosed disclaimers: are you ready?
• To jump to the conclusion: "Document D2 is thus prior art under Article 54(2) EPC for the subject-matter of claim 1 not enjoying priority, i.e. in relation to the "consisting" and "comprising" embodiments concerning SEQ ID NOs: 5 to 8, and prior art under Article 54(3) EPC for the subject-matter of claim 1 enjoying priority, i.e. in relation to the "consisting" and "comprising" embodiments concerning SEQ ID NO: 4."
•   The "comprising" embodiment in relation to SEQ ID NOs: 5 to 8 of claim 1 encompasses Type-A DNA polymerase mutants that are structurally identical to Taq mutants disclosed in document D2. Appellant I has not argued to the contrary. The fact that the patent does not call these polymerases Taq mutants but gives them a different name does not change the fact that these mutants are structurally identical."
• "Since the undisclosed disclaimer added to claim 1 in auxiliary request 2 (point 17 above) thus removes embodiments of document D2 which belong to the state of the art pursuant to Article 54(2) EPC and are not an accidental disclosure, such amendment is not allowable under Article 123(2) EPC. Auxiliary request 2 comprises therefore added subject-matter (G 1/03, Headnote 2.1 and G 1/16, OJ 2018, 70, Headnote)."
  
  
• On Article 13(2) RPBA: " As regards the validity of the patent's priority claim based on P the following is noted. In reply to the communication under Article 15(1) RPBA indicating the board's preliminary opinion that priority was not valid for the subject-matter of claim 1 of auxiliary request 2, appellant I has submitted for the first time the argument that embodiments of claim 1 in reference to SEQ ID NO: 4 were entitled to claim a partial priority from P. "
•  Since appellant I introduced the issue of partial priority of certain embodiments of claim 1 in response to the board's communication shortly before the oral proceedings, appellant II could not have submitted their counterarguments on this issue earlier than at the oral proceedings. The board found merit in appellant I's arguments on partial priority of claim 1 and considered it a legitimate reaction to the board's preliminary opinion. For reasons of equity, the board therefore admitted into the proceedings the new lines of arguments on partial priority of both appellants. The same applied to appellant II's new line of argument under lack of novelty over document D2 in relation thereto."
  
  
• On pre-emptively filed auxiliary requests and the need for substantiation.
• "Appellant II [The opponent] requested that auxiliary request 3 not be admitted into the proceedings, arguing in essence that appellant I did not provide any reasons in their SGA under Article 12(3) and (4) RPBA as to why this auxiliary request (filed as auxiliary request 5 with the SGA) overcame any of the objections raised. In similar circumstances these provisions had led the Boards to decide not to admit auxiliary requests, for example, in case T 559/20."
• "The board agrees with appellant I that the purpose of the amendment by deletion of all reference sequences except for SEQ ID NO: 4 in claims 1 and 9 of auxiliary request 3 was straightforward, as it was clear that it was made to establish novelty and to overcome the finding of added subject-matter. In these circumstances and differently from the situation present in the case law cited by appellant II, the level of substantiation provided in the SGA, as well as in the further submission of 14 December 2022, is considered appropriate. Further, as this amendment is occasioned by objections raised in the proceedings, it complies with the requirements of Rule 80 EPC." 
• "Furthermore the opposition division held that the patent in suit could be maintained in amended form on a request ranking higher than present auxiliary request 3 (section III above). Since appellant I was thus not negatively affected as regards auxiliary request 3, also for this reason the situation in the present case differs fundamentally from that underlying T 559/20, wherein the set of claims in suit had been the object of the appealed decision (T 559/20, Reasons 3.2). Hence, contrary to appellant II's arguments, decision T 559/20 cannot therefore support their case either."
• I think AR-3 was then filed pre-emptively with the Statement of grounds. I wonder whether the proprietor should have substantiated them in their reply to the statement of grounds of the opponent, which attacked the set of claims held allowable by the OD? Or does the pre-emptive filing liberate the proprietor from that obligation? Althoug in the present case, the amendment could have been self-evident.
• There is also some interesting reasoning on the credibility (formerly plausibility) of second medical use claims under G 2/21.
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EPO 

The link to the decision can be found after the jump.

T 0493/23 - Partial priority and intermediate generalisation

Key points

• The priority application discloses a widget with feature X, and a widget with features X, Y and Z. The patent is filed and granted with claim 1 directed to the widget with X+Y. Is the priority partially valid?
• This decision suggests not, incorrectly, it seems to me.
• The Board: " In a further line of argument, the [proprietor] submitted that claim 1 enjoyed partial priority for those threaded connections where the widths were the same in the varying-thread-width portions. Decision G 1/15 was mentioned in this context. "
• "The board is not persuaded. The Enlarged Board of Appeal ruled in decision G 1/15 that, 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."
• " [1] However, in the present case, claim 1 does not contain any generic expression that can be understood to encompass alternative subject-matter. [2] In fact, none of the features of claim 1 of the twelfth auxiliary request brings the width of the female thread-grooves in connection with that of the male thread-ridges, or the width of the male thread-grooves with that of the female thread-ridges, in the varying-thread-width portions. [3] Therefore, claim 1 is not a generic "OR" claim in the sense of decision G 1/15." (numbers added)
• As a comment, the Board in sentence [1] does not engage with the "or otherwise" in the headnote of G1/15. 
• I don't fully understand sentence [2], and it is not clear to me if it aims to engage with the "or otherwise" part of the holding of G1/15. The priority application contained the embodiment and the claim encompassed the embodiment (something with ridges). 
• The third sentence is a conclusion only.
• The claim is held to be not novel over D5 of the same applicants. D5 is Art.54(3) prior art claiming priority of JP2016181175A, the present application claims priority of JP20160181176, filed on the same date. I did not check, but I suppose the disclosure is identical in the relevant parts between those two documents. 
  
• The problem is that this approach opens the door to zombie poisonous priority (and toxic divisionals) - precisely where G 1/15 had firmly shut the coffin. 
• To cite G 1/22, point 54 of the reasons: "the Rules of the Paris Convention and the self-contained priority system of the EPC should be construed in a manner which ensures that the above-mentioned general purpose is fulfilled as far as possible (T 15/01, Reasons, point 34, confirmed in T 5/05, Reasons, point 4.4; see also Straus, The Right to Priority in Article 4A(1) of the Paris Convention and Article 87(1) of the European Patent Convention, JIPLP 2019, 687, 688/689)." viz. "The basic purpose of the right of priority is to safeguard, for a limited period, the interests of patent applicants in their endeavour to obtain international protection for their inventions, thereby alleviating the negative consequences of the principle of territoriality in patent law (T 15/01, OJ EPO 2006, 153, Reasons, point 32, with references to the relevant literature). The priority provisions contained in the Paris Convention should not be regarded as a body of exception clauses which should be interpreted strictly (see in this respect T 998/99, OJ EPO 2005, 229, Reasons, point 3.1; see also T 1201/14, Reasons, point 3.2.1.3). "
• Comments from readers are welcome!
• 
  

EPO 

The link to the decision can be found after the jump.

T 0307/22 - Partial priority and intermediate prior art

Key points

• EQE D-like fun with partial priority and a German utility model.
• The opponent contests the validity of the priority after the deadline for written submissions, simultaneously filing D7 which is a DE utility model published in the priority year. The OD found the priority to be valid and did not admit D7.
• The decision on priority is open to review by the Board.
• The Board considers the claims as granted to be broader than the disclosure of the priority document, such that the priority is only partially valid. The Board then is of the view that it has to decide on the admissibility of D7 in appeal.
• The Board, in machine translation:  "With regard to the remaining part of claim 1 [i.e. lacking priority] - dishwashers with a "non-parallel" arrangement of the first leg and door leaf [i.e. panel]- there is no novelty-damaging disclosure in D7, analogous to D8 [=the priority document]."
• D7 has the same contents as the priority application D8.
• The opponent submitted during the oral proceedings before the board, that D7 is full prior art for the parts of the claims not entitled to priority, that it can be cited for both novelty and inventive step against those parts, and would be detrimental to inventive step.
• The Board considers the inventive step argumentation to be not prima facie highly relevant and does not admit it (actually, does not admit D7). The Board considers the part of the claim to be a a non-obvious alternative, or at least that the opponent had not clearly shown that the part of the claim is obvious over D7.
• This part of the decision seems fact-specific. 
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 1946/21 - (I) Transfer of priority, partial priority, and no shield effect of priority

Key points

• In this decision issued on 21.07.2023, the Board clarifies whether an assignment of a priority right must be executed at the latest on the day before the filing date of the subsequent application or can be executed on the day the subsequent application is filed but before the filing.
• "It is disputed whether the right to priority was validly transferred to the respondent and whether, therefore, the respondent was entitled to claim priority from the CN'506 application"
• "At the oral proceedings, the opponents agreed that the last question was decisive for the case in hand; if it were decided that in order to validly claim priority, the assignment could have been made on the day on which the subsequent application is filed, all the other issues would no longer be relevant."
• "It is settled case law that for the requirement of Article 87(1) EPC it is insufficient if the transfer agreement was concluded after the subsequent application was filed. The succession in title has to have taken place by the time the subsequent application is filed (T 577/11, Reasons 6.5.2; see also T 1201/14, Reasons 3.1.1.3). "
• There is no prior case law of the Boards about a same-day assignment.
• "There is a simple reason why the assignment of the right to priority need not be effective before the filing date of the subsequent application in order to meet the requirement of "successor in title" under Article 87(1) EPC: that is not what the law says."
• Introducing the requirement "would lead to the situation where a successor in title who obtained the right to priority on a certain day by way of an assignment always has to wait for the next day to file the subsequent application in order to enjoy its right to priority. In other words, the successor in title entitled to the right to priority because it was transferred to it on a certain day could not benefit from this right on that day. The Board cannot see any convincing reasons why this should be the case."
• "The applicant who on that day becomes successor in title could not file the subsequent application and enjoy a right to priority - they would have to wait until the next day but would then miss the deadline and be unable to enjoy the right to priority. The Board sees no reason for such unequal treatment."
• "It is down to the patent proprietor relying on the right to priority to demonstrate that the assignment was effective before the subsequent application is filed. Thus, if only the date on which the subsequent application was filed can be determined but not the exact time in the course of a day, the application may have to be considered to be filed at any time on the day of filing. If the assignment of the right to priority was then effective on that same date, the patent proprietor will not be able to successfully demonstrate that the then applicant had been the "successor in title" at the moment of the filing, i.e. that the assignment had been effective before the subsequent application was filed. This is not a question of legal certainty or treating applicants unequally; it is a question of fact which has to be proven by the applicant of the subsequent application claiming the right to priority.
• Indeed, it is down to the applicant filing the subsequent application to decide whether it is worth taking the risk of having to prove not only the filing date of the application and the assignment date but also the exact time of day of both. This may also depend on the chosen means of filing (delivery, postal services, electronic means) - the exact time of filing may be easier to prove for some means of filing than for others. It may thus be very much advisable, in order to avoid any issues of proof in this respect, to complete the transfer on the day before the subsequent application is filed. However, this is a decision for the applicant to make."
• As a practical tip, the applicant can just include a copy of the assignment with the filing documents of the subsequent application.
• "Taking into account the evidence on file, the Board considers that the respondent has indeed demonstrated that the contracts regarding the transfer of the right to priority had been validly concluded when it filed the subsequent application on 5 September 2014. This was not contested by the appellant or the intervener (see point 2.2 above). In view of the above considerations, the Board thus concludes that the then applicant was indeed the "successor in title" who enjoyed the right to priority within the meaning of Article 87(1) EPC.'

Partial priority

• Now turning to truly EQE D stuff.
• The application claims the priority of 8 Chinese patent and utility model applications applications and one Dutch patent application. The applicant is a US legal entity, the inventors are Chinese. The CN utility model application was published in the priority year.
• "The appellant and the intervener argued that the disclosure of [Chinese utility model application] D29 could not provide a priority right for the general subject-matter of claim 1 as granted. Consequently, the content of D29 - corresponding to a particular embodiment of the general subject-matter claimed in the contested patent - anticipated the subject-matter of claim 1, which was therefore not novel. In particular, no partial priority of claim 1 could be acknowledged in the light of the decision of the Enlarged Board of Appeal in case G 2/98 since D29 did not concern an alternative among a limited number of alternative subjects with regard to claim 1 as granted. Rather, claim 1 encompassed an unlimited number of alternatives when compared with the disclosure of D29.| 
• "The Board finds, however, that the principles established in G 1/15 apply to the case in hand."
• "In this Board's opinion, the Enlarged Board has indeed used the term "or otherwise" in the conclusion of G 1/15 to include all kinds of generalisations and thus to not be limited to the use in the subsequent application of a generic expression or a broadening of a chemical formula, etc."
• The Board does not admit the inventive step attack starting from D29. "the line of attack starting from D29 as the closest prior art is not taken into consideration (Article 13(2) RPBA 2020)."
• Question for the readers: how can D29 be cited as the closest prior art, given that the partial priority is found to be valid?
•  Assume that D29 teaches "gold" and the claim specifies "metal", the priority is invalid for the embodiments other than gold. Because D29 was published in the priority year, it can be fully cited against the claim embodiments lacking priority. The EPO does not have the shield theory of priority (see my post of 01.09.2017). It does not matter that the priority of D29 is claimed.
• Generally, a prior disclosure of "gold" would make it obvious to use other metals. However, this is a matter of fact and can depend on the circumstances. In the case at hand, the attack was late filed under Art.13(2) and the Board could dismiss it as not prima facie relevant because "Document D29 only discloses laminated elements arranged vertically in an annular array (see claim 1, and also page 3, lines 27-29, and paragraphs [0011] and [0025] of D29.1). The skilled person could not infer from D29 that the laminated elements could be arranged in a different orientation or so as to form an array which is not annular. " ... "the modification of the annular arrangement disclosed in D29 is not a mere design choice but would require a pointer in order to be considered by the skilled person. The appellant and the intervener have failed to indicate where the skilled person would find this pointer or why it belongs to the common general knowledge."
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EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0088/21 - No undisclosed disclaimers for partial priority

Key points

• Claim 1 without the disclaimer enjoys partial priority from D0 because there is a still earlier application D1a, of the (same) applicant, which discloses (in the examples) an embodiment of the present claims without the disclaimer. The still earlier application D1a serves as the priority application for a PCT application D1 that was published in the priority year; the PCT application is also a Euro-PCT application which forms a prior right for the part of the claim for which the priority is valid. 
• I'm aware that the above paragraph is perhaps a bit concise summary. The Board sets out the relevant facts very clearly. 
• So, for the claims without the disclaimer, D1 is novelty destroying prior art under Article 54(2). For the claims with the disclaimer, D1 is a prior right under Art. 54(3) and not novelty-destroying because the overlapping subject-matter is disclaimed.
• An undisclosed disclaimer was accepted in such a case in T1872/14 which was, however, issued before G1/15 on partial priority.
• The Board:  "the criteria developed in G 1/03, together with G 1/16, are not fulfilled, and the disclaimer in claim 1 of the main request violates Article 123(2) EPC."
• " This line of argument [of the applicant] is based on the incorrect assumption that the claim with (i.e. after the inclusion of) the disclaimer was decisive in the given context. This is, however, not in accordance with the principles developed in G 1/03 and G 1/16."
• The Board agrees with the concise reasoning in T 0311/18: "The requirements of Article 123(2) EPC are not met for the following reasons: The disclaimer introduced in claim 1 is not allowable since, for the subject-matter disclaimed, D5 is not prior art under Article 54(3) EPC, but rather it is the first application within the meaning of Article 87(1)(b) (see T 282/12, Reasons 2). Consequently the patent in this case does not validly claim priority for said subject-matter and D5 is prior art under Article 54(2) EPC for the disclaimed subject-matter. The requirements for a disclaimer to be allowable, as set out in G 1/16, OJ EPO 2018, A70, in combination with G 1/03, OJ EPO 2004, 413, are therefore not met."
• The present Board: "The concept of G 1/15 that alternative subject-matter encompassed by a generic claim may enjoy partial priority is beneficial [for applicants] in some situations, namely when it is to be assessed whether a priority document relates to the same invention. But it may be disadvantageous in other situations, namely when the nature of a priority document as the first application is at stake in view of an even earlier application by the same applicant."
• "G 2/98 advocates a "narrow or strict interpretation" of the concept of the same invention and the right to priority (see Reasons 9 and T 1222/11, Reasons 9.1)."
• As a comment, G 2/98 only uses the phrase "narrow or strict interpretation" in relation to the concept of the same invention, not in relation to priority in general.
• "Moreover, the appellant already knew the content of their documents D1a/D1 at the time of filing the current application, and it was in their hands for the current situation not to occur. It rests with an applicant to manage their patent portfolio in line with the provisions of the EPC they want to avail themselves of, however large this portfolio may be, not least in the interest of legal certainty for third parties."
• This reasoning does not convince me. G 2/03 permits undisclosed disclaimers in case the prior right originates from the same applicant and is hence not based on reasons of culpability. On the other hand, in the present case of a priority gap, it is incidental that the cited document is a patent application of the same applicant. Even though a priority gap is always caused by a still earlier application or the same applicant, that still earlier publication does not need to be published, let alone in the priority year; it is also possible that the cited document is a publication of a third party in the priority year. 
• As a comment, I leave it as a question to the reader whether G2/03 expressly or implicitly says the list of cases permitting undisclosed disclaimers given therein is exhaustive and whether we should take it "as carved in stone" (cf. G 3/19). 
• I note that G 2/03 r.2.6.3 considered the case of "a lack-of-novelty objection raised under Article 54(3) EPC [which] becomes an anticipation under Article 54(2) EPC because the application-in-suit turns out not to enjoy the claimed right of priority, either because it was not valid from the outset, or because it was lost following a further amendment, additional to the disclaimer, not disclosed in the priority application."
• I note that G 2/03 seems to provide an equitable solution, at least refers to "unfairness" in r. 2.1.1 and 2.2.1. 
  
  
• Interestingly, the disclaimer was drafted by reference to D1: "with the proviso that the glass article (300) is not a glass article according to Examples 4A, 4B, 4C, 4D or 5A of EP 3 204 338 A2." The Board needs to comment on whether such a formulation meets Art.84.
   

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0969/14 - Partial transfer of priority?

Key points

• In this opposition appeal case, the question is whether the priority is valid. The priority application D16 was filed by Chiesi, the application that became the patent in suit was filed by Vectura. The question is therefore whether Vectura " owned the priority right resulting from D16" 
• There is an assignment D22 from Chiesi to Vecture of " rights to the ownership of application 3 (D16)" . However, there is a further assignment D23 "in which Vectura re-assigned to Chiesi the right to claim priority from application 3 (D16) in worldwide patent applications insofar and only insofar as said worldwide patent applications shall claim the Programme 2 formulations." The "Programme 2 formulations" are embodiments of the invention.
•  The Board first notes that in G1/15 the Enlarged Board has ruled that entitlement to partial priority may not be refused for a generic "OR"  claim. 
• The Board: "Once it is acknowledged that partial priority rights exist, they must also be transferable separately. This, however, has consequences for the remaining priority right, because the assignor is left with a limited right." 
• The patentee had argued that according to   T 15/01 there is no exhaustion of priority rights. The Board: "However, an applicant can only claim a right which he owns and this was not the case for the priority right concerning the Programme 2 formulations. An applicant cannot transfer a partial priority right and at the same time keep it for claiming it in a broader context." 
• The Board finds that "Consequently, the subject-matter of claim 1 as granted encompasses embodiments for which the patent proprietor did not have the priority right and for which therefore the priority is not valid."  
• The priority is therefore partially invalid.
• Claim 1 is therefore not novel over D14, a prior right under Article 54(3). D14 validly claims priority of D16 and which discloses embodiments for which the priority of the claim 1 at issue is not valid. Consequently, the main request does not meet the requirements of Article 54(3) EPC.
• As a comment, I think that the Board assumes too easily that "Once it is acknowledged that partial priority rights exist, they must also be transferable separately." Not everything that exists, can be transferred under law. For example, under Dutch law, claims of a patent can not be transferred:  a person can e.g. be owner of a 50% share of a patent or a patent application, but claim 1 and claim 2 can not have different owners (same for the EPO of course). The same applies to e.g. pedals of a bike under Dutch law. The pedals and the bike can have a different owner once the pedals are removed from the bike, but not as long as the pedals are part of the bike, the owner of the bike is owner of the entire bike. I can perfectly agree to with someone to sell to him the pedals, or to sell to him claim 2 of a patent, but such agreement is without effect as a matter of Dutch property law. Hence, the fact that "partial priority" exists as a matter of patent law, does not mean that it is separately transferable. The latter is a priori a matter of national law. If Dutch law is the applicable national law, it must be concluded that the assignment D22 is without effect as to the ownership of the priority right (under Dutch law, there is a strict distinction between agreements and ownership, as in German law). 
• Auxiliary Request 4 adds a disclaimer to exclude the "Programme 2 formulations", the disclaimer feature was in claim 17 of the application as filed."The amendment brought to claim 1 of this request overcomes all issues as regards the validity of the priority and the relevance of D14 under Article 54(3) EPC." However, AR4 is not admitted because it was filed with the Statement of grounds. "The patent proprietor could have filed a request disclaiming the formulations for which the priority was not valid. He even had an express basis for this in claim 17 as filed and in claim 16 as granted to address this very issue." The request should have been filed before the OD.

EPO T0969/14 -  link

Reasons for the Decision

1. Validity of the priority

1.1 Pursuant to Article 87(1) EPC, a right of priority originates in the applicant of a first application. Therefore, in principle, the applicant has to be the same for the first application and for the subsequent application for which the right of priority is invoked. However, pursuant to Article 87(1) EPC, the right of priority may also be invoked by the "successor in title" of the person who has filed the first application. By reference to the "successor in title", it is recognised that the right of priority, being a legal right, may be transferred from the original applicant to a third person. It is generally accepted that the right of priority is transferable independently of the corresponding first application. The transfer must have occurred before the filing date of the subsequent application. This is well established jurisprudence of the Boards of Appeal (cf T 205/14 of 18 June 2015, with further references).

T 2466/13 - Transfer of priority and partial priority

Key points

• In this opposition case, the patent claims the priority of a Spanish utility model, which was published in the priority year.
• For one priority, a valid transfer of priority was required. There was a written assignment signed before the PCT filing date. The opponent has doubts about the assignment, pointing to 1) lack of original documents 2) possibly incorrect signatures and 3) the authority of the persons signing. The Board dismisses these objections without much difficulties.
•  In present claim 1, some features of claim 1 of the priority document are omitted. Therefore, for the requirement of 'same invention', the question is whether the description of the priority document directly and unambiguously discloses these features as optional. The Board decides that this is not the case.
• Therefore, there is a case of partial priority: for the embodiments of present claim 1 with the features at issue, priority is valid. For the other embodiments not having the features, priority is invalid. The priority application was published in the priority year and is cited for inventive step (hence, no 'shield theory' ; but the decision does not discuss that theory). The embodiments without the features lack inventive step over the priority application as published. 
• An Auxiliary Request was allowable. Concerning the opponent's objections to the adaption of the description, the Board agrees that the description can have an effect on the scope of protection under Art. 69 EPC in national proceedings. However, any objections of added subject-matter can be made in those national proceedings, according to the Board. 

EPO T 2466/13 -  link

Motifs de la décision

1. Droit applicable

La demande de brevet sur la base de laquelle le brevet a été délivré, a été déposée le 18 juin 2003. Par conséquent, en application de l'article 7 de l'Acte portant révision de la CBE en date du 29 novembre 2000 (JO OEB, édition spéciale 4/2007, 235) et de la Décision du Conseil d'administration du 28 juin 2001 relative aux dispositions transitoires au titre de l'article 7 de l'acte de révision de la Convention sur le brevet européen du 29 novembre 2000 (JO OEB, édition spéciale 4/2007, 237) l'article 56 CBE 1973 et l'article 123 CBE (2000) lui sont applicables.

Le brevet ayant été délivré sur la base d'une demande internationale, la validité de la revendication de priorité est régie par l'article 4 de l'Acte de Stockholm de la Convention de Paris pour la protection de la propriété industrielle, ensemble l'article 8, alinéa 2) a) PCT.

2. Validité de la revendication de priorité

La division d'opposition a estimé que la requête principale et les requêtes subsidiaires 1 et 2 qui lui avaient été soumises ne concernaient pas la même invention que le modèle d'utilité espagnol U 200201600 du 24 juin 2002 (numéro de publication : ES 1 052 377 ; ci-après "Prio00"), mais qu'elles revendiquaient valablement la priorité du modèle d'utilité espagnol U 200201601 du 24 juin 2002 (numéro de publication : ES 1 052 378 ; ci-après "Prio01").

La requérante a contesté la validité de la revendication de la priorité du document Prio01 à deux titres : elle a mis en cause la validité formelle de la cession et fait valoir que la demande Prio01 ne concernait pas la "même invention" que la revendication 1 de la requête principale.

2.1 Validité formelle du transfert

2.1.1 Niveau de preuve requis

Selon la jurisprudence des chambres de recours, lorsque toutes les preuves d'un usage antérieur public se trouvent en la possession de l'opposante qui est seule à en avoir connaissance, si bien que la titulaire du brevet ne peut que difficilement ou même ne peut absolument pas se les procurer, il revient à l'opposante de produire la preuve incontestable ("au-delà de tout doute raisonnable") de l'utilisation antérieure alléguée.

T 0282/12 - Reverse application of partial priority

Key points

• In this appeal, novelty of claim 1 had to be decided of novelty over the claimed "dosage form" over a public prior use in the priority interval. The priority document D1 and claim 1 both included a range of 3 - 33%. However, D1 was a continuation in part, and there was an earlier filed patent application D22 relating to the same "dosage form" as claimed, but with 5 - 33% as range. 
• The Board decides that "in respect of the sub-range 5% to 33% D1 is not the first application within the meaning of Article 87(1) EPC. It follows that the part of claim 1 of the main request concerning the dosage forms wherein the gap width is between 5% to 33% of the length of the dosage form is not entitled to the priority date of D1". 
• Hence, the priority is partially invalid. However, this leads to lack of novelty over the public prior use (if the prior use is proven). "This part of claim 1 of the main request is the relevant one in relation to the alleged prior use since, [the public prior use had 17% according to the opponent] ". Accordingly, the case is remitted.

EPO Headnote

For reasons of consistency, the rationale of decision G 1/15 (concept of partial priority) must also apply in the context of deciding whether an application from which priority is claimed is the first application within the meaning of Article 87(1) EPC. Indeed, just as a priority application and a patent claiming priority therefrom may partially relate to the same invention, the priority application and an earlier application filed by the same applicant may also partially relate to the same invention. In that case, the priority application would be the first application in respect of only that part of the invention which is not the same as in the earlier application (see points 2.1 to 2.7).

EPO T 0282/12 / EPO T 282/12 - link

Reasons for the Decision

Main request

1. The appellant challenges the novelty of claim 1 on the basis of the public prior use of the product "Extra Strength Tylenol Rapid Release Gels". In its statement setting out the grounds of appeal it explains that this product is a coated oral dosage form of acetaminophen characterised inter alia by the presence of two gelatinous coatings that form a gap through which a subcoating is exposed, this gap having a width which is approximately 17% of the length of the dosage form.

Since the public prior use of this product allegedly occurred during the priority interval, it is necessary to assess the validity of the priority date claimed in order to establish whether the prior use forms part of the prior art pursuant to Article 54(2) EPC.

2. Assessment of priority

2.1 The dosage form of the main request comprises a first and a second gelatinous coating that do not abut or overlap with one another, thereby forming a gap through which a sub-coating is exposed.

In claim 1 of the main request this gap is set as being 3% to 33% of the length of the dosage from. The same range 3% to 33% is disclosed in the priority document D1 (paragraph [0109]). By contrast D22, an earlier application of the appellant relating to the same kind of gelatinous coated dosage forms, recites a range of 5% to 33% (paragraph [0107]).

2.2 It is not disputed by the parties, that the priority application D1 discloses the subject-matter of claim 1 of the main request.

The appellant contests, however, the validity of the priority claim on the basis of the argument that document D1 is not the first application, within the meaning of Article 87(1) EPC, disclosing the subject-matter of the main request. In its view, the first application is document D22, of which D1 is a continuation-in-part.

T 0557b/13 - After G 1/15 - Partial priority

Key points

• This is the Board's decision in the case wherein questions were referred to the Enlarged Board, leading to G 1/15. The Board now finds that the claim (of the divisional application in suit) is entitled to partial priority for the embodiments disclosed in the priority application. Hence, the fact that the published parent application discloses the same embodiments, is not prejudicial to novelty.

EPO T 0557/13 -  link

Reasons for the Decision

Novelty

1. The only novelty objections raised by the Opponent are based on the parent application D1. More particularly, the Opponent had argued that some specific examples of D1 disclosed uses falling within the ambit of Claim 1 at issue (notice of opposition, page 4, three first paragraphs).

2. According to G 1/15, entitlement to partial priority may not be refused for Claim 1 at issue to the extent that alternative subject-matter encompassed has been disclosed for the first time, directly, or at least implicitly, and unambiguously, and in an enabling manner, in the priority document (here D16).

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). 

T 0260/14 - Partial priority also for narrowed claims

Key points

• In this decision, the Board applies G 1/15 about partial priority: is claim 1 novel over the published EP priority application D5, in particular the example of D5? The Board decides that partial priority can be acknowledged concerning the working example. 
• " The working example is thus alternative subject-matter by virtue of a generic "OR"-claim which falls within the ambit of claim 1 of the patent in suit. Thus, the part of claim 1 which concerns the working example is entitled to partial priority. Therefore, the disclosure in the priority document of the working example cannot be considered to take away the novelty of the subject-matter of claim 1 pursuant to Article 54(3) EPC." 
• Unlike in G 1/15, claim 1 was not broadened compared to the priority document D5, but narrowed. According to the Board, this is not relevant.
• " 2.4 The Board does not accept the appellant-opponent's argument that the questions referred to the Enlarged Board in G 1/15 were not relevant for the case at issue. The appellant-opponent argued that the referral in G 1/15 concerned the situation where the priority document disclosed only one or more embodiments, but not the subject-matter of the entire claim claiming that priority, whereas the patent in suit comprised a limitation of the more general disclosure in D5. [] The Board notes that this comparison, as well as the reference to other distinguishing features between the patent in suit and D5, concerns the question of whether priority can be acknowledged for the entire scope of claim 1 of the patent in suit. This is, however, not the issue which the Board needs to decide. The only relevant issue is whether partial priority can be acknowledged for that part of claim 1 which concerns the working example, i.e. that part of claim 1 against which the novelty attack was directed."

EPO T 0260/14 -  link 

2. Novelty

2.1 The opposition division decided that the patent was not entitled to the claimed priority date and that claim 1 of the patent in suit lacked novelty pursuant to Article 54(3) EPC in view of the priority document itself (document D5) which was published on 30 January 2008, i.e. after the filing date of the patent in suit (24 July 2007).

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;

T 1872/14 - Allowable disclaimer for A54(2)

Key points

• Opposition was filed against a patent with an undisclosed disclaimer in the claims as granted. The Board finds that the disclaimer is allowable. 
• Moreover, the document D1 of which the example was disclaimed, was an application of the same applicant, and would therefore be a first filing for the now claimed subject matter without the disclaimer. The disclaimer therefore also restores validity of the claimed priority (and renders D1 a prior right and not Article 54(2)  EPC prior art). The Board deems this allowable. The remark in G 1/03, that introducing a valid disclaimer, does not affect priority, can not be understood the other way around.
• " Therefore, on a objective reading, said passage [ in G 1/03] cannot be said to advocate that the entitlement to priority is to be evaluated based on the subject-matter claimed prior to the introduction of the disclaimer; rather, the subject-matter actually claimed is to be taken as the starting point and compared with the content of the priority document, in order to establish whether the introduction of the disclaimer changes the identity of what is claimed, in analogy to the criteria set out in decision G 2/10"
• The Board hence does not follow T 1222/11, wherein the Board expressly rejected the use of a disclaimer, because the earlier filing in that case was Article 54(2) EPC prior art for the claim without disclaimer. 
• The Board further explains that " contrary to the submission of the appellant opponents, the problem-solution approach was not merely developed as an exercise in time saving, but rather in order to ensure an objective assessment of inventive step and avoid ex post facto analysis of the prior art" 

EPO T 1872/14 - link (online 27.07.2016)

Summary of Facts and Submissions

I. European patent No. 1 920 764 was filed as patent application No. 08 100 474.9 (document (34)). It is a divisional application of the parent application No. 04 077 870.6, which in turn is a divisional application of the root application No. 94 305 752.1 (document (35)), filed on 3 August 1994 and claiming priority of 3 August 1993 from the US patent application No. 08/101,598 (document (36)).

II. Independent claim 1 of the patent in suit as granted reads as follows (emphasis added):

"1. A topical ophthalmic composition for use in the treatment of glaucoma and ocular hypertension comprising a therapeutically effective amount of fluprostenol isopropyl ester,
with the proviso that the composition does not include the following composition: compound (F) 0.0001 wt%, fluprostenol isopropyl ester 0.001 wt%, benzalkonium chloride 0.01 wt%, dextran 70 0.1 wt%, disodium edetate 0.05 wt%, potassium chloride 0.12 wt%, sodium chloride 0.77 wt%, hydroxypropyl methyl cellulose 0.3 wt%, HCl and/or NaOH to adjust pH, and purified water q.s. to 100%, wherein compound (F) has the following formula: FORMULA/TABLE/GRAPHIC"

National decision - Partial priority

Patents Court of 10 July 2013 – HTC Corporation v Gemalto SA and HTC Corporation v Gemalto NV [2013] EWHC 1876 (Pat) (BAILII) 

Key point

• In this UK decision, a question was whether the claims had priority in view of the requirement of "same invention", because the claims were a generalization from the priority document. 
• This decision is also discussed in recent decision T 557/13 referring the questions about partial priority to the Enlarged Board in G1/15:

15.2.2 In HTC Corporation v Gemalto SA and HTC Corporation v Gemalto NV [2013] EWHC 1876 (Pat) of 10 July 2013, concerning European Patent (UK) 0 932 865, the judge noted with reference to G 2/98 (Reasons, 6.7), that "although one can sympathise with the desire for a limited number", it was questionable whether there was "any principled basis for such a requirement". The "need for clearly defined alternative subject-matters" was expressly accepted "if a single claim is to be given partial or multiple priorities" (paragraph 160).
In effect (paragraph 195), claim 1 comprising features defined with respect to a "high level language", was not found to be (even partially) entitled to priority, since "Java" was the only programming language disclosed in the priority document. However, claim 3, dependent on claim 1 and limited by reference to "Java", was found to enjoy priority.

This post has been kept in stock for some time. 

Summary
OJ 2015, Sp. 2. 

Keyword: priority – same invention – multiple priorities

HTC had challenged the priority claimed for Gemalto SA's European patent (UK) 0 932 865 ("Using a High Level Programming Language with a Microcontroller").

T 557/13 - G1/15 - Partial priority and poisonous divisional

EPO T0557/13 -  G0001/15 - referral - [A] ( T557/13 ; G 1/15 ; G1/15 )

For the decision, click here

Key points

The Board refers the following questions to the Enlarged Board of Appeal:

1. Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic "OR"-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document?

2. If the answer is yes, subject to certain conditions, is the proviso "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" in point 6.7 of G 2/98 to be taken as the legal test for assessing entitlement to partial priority for a generic "OR"-claim?

3. If the answer to question 2 is yes, how are the criteria "limited number" and "clearly defined alternative subject- matters" to be interpreted and applied?

4. If the answer to question 2 is no, how is entitlement to partial priority to be assessed for a generic "OR"-claim?

5. If an affirmative answer is given to question 1, may subject-matter disclosed in a parent or divisional application of a European patent application be cited as state of the art under Article 54(3) EPC against subject-matter disclosed in the priority document and encompassed as an alternative in a generic "OR"-claim of the said European patent application or of the patent granted thereon?