It is not always possible to fully flush out the claims at the time of filing a priority patent application (the "priority application") due to time or money constraints. Furthermore, the invention may still be in the development stage and the followup regular patent application (the "regular application") filed within one year of the priority application may include additional embodiments and data and have a different claim scope. The European Patent Office (EPO) will only allow the regular application to claim back to the filing date of the priority application (the "priority date") for subject matter that is "directly and unambiguously" derived from the disclosure of the priority application.1 The EPO takes a strict approach when assessing priority entitlement and any claim in the regular application that introduces additional features or which defines the invention in broader terms than the disclosure of the priority application will not be entitled to the priority date. This can result in a number of pitfalls which are addressed in this article.
Public Disclosure During the Priority Year
A public disclosure of the invention, either by the applicant or some other party, which occurs between the priority date and the filing date of the regular application will be considered state of the art for the assessment of novelty and obviousness for any claims in the regular application which are not entitled to the priority date. This was the situation with Myriad's BRCA1 European Patent 0699754 where a number of claims were disallowed as a result of Myriad's own publication of the BRCA1 gene sequence. The gene sequence in the priority application contained nine incorrect amino acids and the incorrect sequence was subsequently published before the regular application was filed. The regular application contained the correct sequence and the opposition division of the EPO held that claims to the gene sequence in the regular application were not entitled to the priority date as the sequence could not be "directly and unambiguously" derived from the sequence in the priority application due to the nine different amino acids. As the claims were not entitled to the priority date, they were found to be obvious in view of Myriad's own publication of the gene sequence before the regular application was filed.
Divisional Applications
A recent EPO Technical Board of Appeal (TBA) case2 highlights the dangers of broadening the scope of the claims in the regular application. This case related to a bank note which was characterized in all the embodiments described in the priority application as including a "printed or embossed" security feature. The regular application included additional embodiments and the claims were broader and not limited to having the "printed or embossed" security feature. A divisional application was filed and published with a description identical to the parent application which included the embodiments to the "printed or embossed" security feature disclosed in the priority application. The TBA found that the claims in the parent application were not entitled to the priority date due to the omission of the "printed or embossed" security feature from the claims. For published European patent applications, the whole content of an earlier filed application is considered state of the art for novelty against the claims of a later-filed application when the earlier-filed application is published after the filing date of the later-filed application.3 Since the divisional application described the "printed or embossed" security feature it was found to be entitled to the priority date for these embodiments. As the claims in the parent application were not entitled to the priority date, the disclosure of the embodiments to the "printed or embossed" security feature in the divisional application which were entitled to the priority date, destroyed the novelty of the claims in the parent application.
Recommendations
Spend the time and money to fully flush out the claims in the priority application. Although additional data and embodiments may be added to the regular application to support the disclosure, ideally the scope of the claimed invention should remain the same to ensure the regular application claims are entitled to the priority date.
Avoid publicly disclosing the invention before the regular application is filed. If the invention is publicly disclosed before the regular application is filed, avoid changing the scope of the claimed invention to ensure the regular application claims are entitled to the priority date.
If the claims in the regular application are broader than the disclosure of the priority application, careful consideration should be taken before filing a divisional application.
Footnotes
1 G2/98 of the EPO Enlarged Board of Appeal (EBA)
2 T1496/11
3 Article 54(3) of the European Patent Convention
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
