European Union: The Right Of Priorities: Recent Developments In EPO Case Law

Last Updated: 19 April 2018
Article by Rudolf Teschemacher

Recent decisions passed by three different instances of the EPO have significant effects on the patentability of inventions under European patent law. All of them concerned the validity of patents to be assessed in opposition proceedings. Applicants should be aware of the consequences of these decisions. Avoidable mistakes when filing a European patent application and even previously may later result in the loss of the patent.

1. EPO, Enlarged Board of Appeal, decision of November 29, 2016, Case G 1/15, OJ EPO 2017, A82 – Infineum USA L.P. v Clariant Produkte (Deutschland) GmbH

Prior to decision G 1/15 of the Enlarged Board of Appeal (EBA), divergent case law created considerable legal uncertainty in respect to the application of Art. 88 (2), 2nd sentence, EPC on partial priorities. One line of case law interpreted the previous decision G 2/98 of the EBA to mean that partial priority can only be claimed if the relevant claim comprises alternative embodiments, one or some of which are covered by the priority. By contrast, these decisions did not acknowledge that partial priority was validly claimed if the subject-matter disclosed in the priority application was claimed in more general terms (e. g. by a broader range) in the European application claiming priority.

This had the consequence that a European application as a priority application could become novelty destroying under Article 54(3) EPC for a more generically defined claim in the later European application claiming priority. In Nestec v Dualit [2013] EWHC 923 (Pat), the Patents Court for England and Wales followed this line of Board of Appeal decisions. The same approach created the problem of "poisonous divisionals". In decision T 1496/11 of September 9, 2012, Board of Appeal 3.2.05 concluded that an embodiment disclosed in a divisional application could anticipate a generic claim of the parent application. While this decision was not followed by others and remained isolated, it added to the already existing uncertainty and made it difficult to advise applicants on how to use divisional applications.

In G 1/15, the EBA found that this restrictive practice did not have a basis in the EPC or the Paris Convention. The EBA restored legal certainty and answered to the referred question as follows:

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.

2. EPO, Technical Board of Appeal 3.3.07, decision of November 9, 2017, Case T 282/12 – Coated tablets/JOHNSON & JOHNSON

It was foreseeable that the definition in G 1/15 which subject-matter may give rise to partial priority could not be without consequences for the assessment of what is the first application from which priority can be claimed within the meaning of Article 87 (1) EPC, corresponding to Art. 4A(1) of the Paris Convention.

The contested claim of the European application in case T 282/12 related to a coated tablet in which a feature for the structure of the tablet was defined by a range of 3 % to 33 % of a given length. This range was disclosed for the same tablet in the US continuation-in-part-application from which priority was claimed. However, a previous application in the US of which the priority application is the continuation-in-part already defined a narrower range of 5 % to 33 % and disclosed all other features. This means, that the previous application already gave rise to a right of priority for a tablet with the narrower range. On the basis of the principle laid down in G 1/15, the Board found that the claimed subject-matter had to be conceptually divided into two parts, i. e. 3 % to 5 % enjoying priority from the continuation-in-part disclosing a tablet with this part of the range as claimed for the first time and 5 % to 33 % not enjoying priority. 

Since a prior use had been alleged exhibiting a value of 17 %, i. e. within the part of the range from 5 % to 33 % for which the priority was held to be not valid, the case was remitted to the Opposition Division for examination of prior use.

3. EPO, Opposition Division, decision concerning European patent 2 771 468 issued in writing on March 26 2018 – The Broad Institute, Inc. et al. v Schlich, George et al.

The contested patent relates to an essential aspect of the CRISPR technology for modifying genetic information. Although the decision, denying priority from a US provisional application, is only a first instance decision, the revocation of the patent pronounced in the oral proceedings on January 17, 2018 has resulted in many comments on blogs and elsewhere. In reaction, the proprietors of the patent stated in a press release that the decision is based on a technical formality and in conflict with international treaties. They immediately filed an appeal and expect that the Board of Appeal will resolve the problem not just for CRISPR patents, but for a wider range of European patents and applications claiming priority from US provisional applications.

The European patent was granted on the basis of a Euro-PCT application claiming priority from 12 US provisional applications. Not all the applicants of the provisional applications were indicated as applicants in the PCT application and the decisive question was whether this was detrimental to some of the priorities. 

In their final submissions, the proprietors relied on 3 lines of arguments:

(i) No competence of the EPO to assess legal entitlement to the right of priority

According to the proprietors, ownership of the right to priority should only be a matter for the national courts to decide and challenging the right of priority should only be allowed for the truly entitled person. 

The Opposition Division finds that, under Articles 87 to 89 EPC, the EPO has to assess the validity of the priority claim in order to determine patentability requirements. Thus, it cannot simply rely on the applicant's declaration on the entitlement to the priority right for determining the relevant state of the art. Rather, it has to examine whether the applicant of the European patent application was the applicant of the first application or is his successor in title. This is in line with EPO's established practice, relevant case law and the legal history of the EPC.

(ii) Any person within the meaning of Article 87(1) EPC should mean anyone of a plurality of co-applicants of the first application

The proprietors submitted that it is the purpose of the priority right to assist the applicant in obtaining international protection. According to them, this can only mean to assist each of the co-applicants of the first application indiscriminately. They stated that third parties' interests are sufficiently guaranteed by the "same invention" requirement. 

In the end, the Opposition Division does not agree. The text of the Convention ("Any person", "Jedermann", "Celui qui") does not give a clear answer as to whether, in the case of co-applicants, "all applicants" or "any of them" is meant, although the French version is the more restrictive one. Neither did the travaux prèparatoires of the EPC or the Paris Convention provide a clear reading. However, a basis for the "all applicants" approach can be found in the first commentaries on the Paris Convention as well as in EPO and national practice and case law. The Opposition Division discusses whether claiming priority by one co-applicant may be considered an act of exploitation which would not exclude the other co-applicants, but notes that this approach would lead to the far-reaching consequence of a multiplication of proceedings with identical content. In any case, there are no exceptional circumstances for the Opposition Division to deviate from the practice established by the Guidelines and consistent case law requiring that the right of priority has to be exercised by all co-applicants of the first application or their successors in title. 

(iii) Any person "who has duly filed" – to be assessed under US law 

Under US law, the person who has duly filed a provisional application as the first application is a person who has contributed to the invention as claimed in the application claiming priority.  Considering that the US provisional(s) disclosed multiple inventions and that some of the inventors/applicants of the provisonals did not contribute to the inventions claimed in the PCT application in the case at hand, the proprietors suggest that US law should be decisive for assessing "who has duly filed".

The Opposition Division disagrees. It holds that, under the Paris Convention, national law only applies to assessing whether the first application is to be accorded a filing date. It does not refer to a condition of substance, in the sense that the person filing the first application should be entitled to the invention. It states that this approach is consistent with Article 5 of the Patent Law Treaty which does not foresee any entitlement to the invention by the person filing the application. The Division argues that Article 8(2)(b) PCT invoked by the proprietors is not relevant in the present context since it is concerned with internal priorities whereas the priority at issue is a Convention priority for which Article 8(2)(a) PCT refers to the Paris Convention. Thus, under the Paris Convention and the EPC, the right to claim priority is derived from the formal filing of the first application, irrespective of the status of inventor.

Remarks

This is not the place to discuss the merits of the appeal in the CRISPR case but it may be expected that the proprietors will spare no pains to get the decision of the Opposition Division set aside. It has been counted that the EPO file has some 42 000 pages, many will be added in appeal proceedings. Maybe a point of law of fundamental importance will be argued and a referral to the EBA be requested.

The present difficulties arise from the fact that the system of provisional applications establishing US internal priority and introduced in 1995 was not conceived analogously to priority under the Paris Convention. Rather, the specific aspects of the US first-to-invent system were the determining factors. At the outset, it was not even possible to get a patent granted on a provisional application. This raised doubts whether a provisional application was "an application for a patent" within the meaning of Article 4A(1) of the Paris Convention (see the Notice of the President of the EPO in OJ EPO 1996, 81). Only later was the problem solved with the possibility to transform a provisional application into a regular application (35 U.S.C. § 111b(5), 2nd sentence). Nevertheless, the system of provisional applications remains amalgamated with questions of inventorship which are outside of the scope of the Paris Convention. While the Paris Convention does not restrict the freedom of the Member States how to establish a system of internal priorities, national provisions on internal priorities cannot modify the requirements of the Paris Convention on priorities in its Article 4. 

Those users of the European patent system not sharing the proprietors' optimism about the result of the appeal proceedings will be well advised to take appropriate precautionary measures in case their right of priority becomes relevant and contested. There are two alternatives:

a) The applicants of the first application remain the applicants for the application claiming priority. Any necessary transfer is made after that point in time. In the international phase of an international application, the indications on the applicant(s) are amended on a request under Rule 92bis PCT.

b) If the applicants for the application claiming priority are not the same as the applicants of the first application, all co-applicants of the first application who are not co-applicants of the application claiming priority have to transfer their right of priority to at least one of the co-applicant(s) of the application claiming priority before filing the latter. Appropriate documentation of the transfer fulfilling the civil law requirements of the applicable law has to be kept available. 

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions