European Union: Partial Priority And Dealing With "Toxic Divisionals" Under The European Patent Convention

A New Referral To The EPO Enlarged Board Of Appeal: Beyond G 2/98

A new referral to the Enlarged Board of Appeal ("EBA") of the European Patent Office ("EPO") seeks clarification on the assessment of partial priority entitlement as well as a statement on the controversy surrounding the so-called "toxic divisional" attack. The referred questions have been published in Board of Appeal Decision T 557/13. At the center of the discussion leading to the referral is decision G 2/98 and the principles laid down by this decision for priority assessment.

Background

The appeal resulted from the opposition division's decision to revoke European patent EP 0921183, based on the fact that the claims were not fully entitled to their priority. The granted claim 1 was a generalization of a specific disclosure in the priority document, and according to the opposition division, claim 1 did not have the priority date of the parent application. Consequently, the published parent application constituted prior art only for the purposes of novelty (Article 54(3) EPC). Hence, the patent under attack lacked novelty over its own parent application. In the present decision, the Technical Board of Appeal recognized that the most important issue to be resolved was whether partial priority could be claimed for a generic claim.

A core requirement for validly claiming priority is that it has to be with respect to "the same invention." This concept has been the subject of extensive analysis and discussion to determine how similar the disclosure of a later application has to be in order to be considered "the same invention" as the earlier application. According to G 2/98, the requirement for claiming priority of "the same invention" is acknowledged if the skilled person can derive the subject matter of the claims directly and unambiguously from the previous application as a whole.

The principle of "the same invention" also applies to applications claiming multiple priorities. According to Article 88(2) EPC, second sentence, it is allowed to have "multiple priorities ... for any one claim." Thus, when evaluating multiple priorities for the same claim, a distinction has to be made between the so-called "AND" claims and "OR" claims.

For example, if an application claims feature A combined with feature B (A+B), but the priority document discloses only feature A, then the priority is not valid for the entire claim. If, on the other hand, the application claims two distinct alternatives, namely feature A or feature B (A/B), then the claim has two priority dates—one for feature A (reaching back to the priority date) and one for feature B (filing date of the subsequent application). The question is, if the application claims feature C in a generic term that encompasses feature A (the so-called "generic OR claim" in the referral), does such claim enjoy partial priority with respect to the subject matter of feature A, and is the remaining subject matter entitled only to the filing date of the subsequent application? For a generic "OR" claim, the Enlarged Board of Appeal in G 2/98 provided guidance on how Article 88(2) EPC is to be interpreted, permitting partial priority where "it gives rise to the claiming of a limited number of clearly defined alternatives."

However, the criteria established by G 2/98 do not seem to provide consistent guidance for priority assessment for generic "OR" claims, and the case law has been developed divergently in interpretation and application of the criteria. Some Boards took a "strict" or "literal" approach, which could lead to denying partial priority, given that the generic term encompasses a practically unlimited number of alternatives that are not expressly spelled out. On the other hand, some Boards took a "generous" or "conceptual" interpretation, which does not require the "clearly defined alternatives" to be spelled out in the claim. Rather, it suffices to be able to conceptually identify a limited number of such alternatives by comparing the generic "OR" claim with the priority document. In this way, partial priority may be acknowledged.

The "strict" approach to partial priority has been used by some opponents to raise so-called "toxic divisional" attacks to invalidate a priority claim, whereby an opponent argues that a family member (a parent or a divisional of the patent at stake) is novelty destroying under Article 54(3) EPC. The attack relies on family members with a more specific disclosure according to the priority document (thus with a valid priority), as compared to a family member with a generic claim, which is not entitled to priority. The latter family member loses priority because of the broader claim, but the more specific disclosure in the former family member retains priority and so it is, in principle, citable as prior art under Article 54(3) EPC against the latter family member. This "toxic divisional" attack has raised much controversy in recent years.

Not limited to the parent-divisional relationship, similar objections could also arise where the "colliding" application is the priority application itself, if the priority application is a European application that matures to publication, known as the "toxic priority."

The Referral

In decision T 557/13, published on August 12, 2015, the Technical Board of Appeal referred five questions to the Enlarged Board of Appeal, in order to settle the diverging case law on partial priority assessment. The questions as published are:

  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?


The first four questions relate to partial priority, and in particular how entitlement to partial priority should be assessed for generic "OR" claims. The questions are intended to clarify the criteria for priority assessment in cases where the earlier application discloses a species, and the later application claims the genus in which that species belongs. For example, can an application claiming "metal" in general validly claim priority from an earlier application where only copper has been disclosed?

If the first question is answered in the negative, i.e., that partial priority cannot be refused, it would end the referral. If the answer to the first question is positive, it moves to the remaining four questions. Should the criteria "it gives rise to the claiming of a limited number of clearly defined alternatives" be used for the test (question 2)? 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 (question 3)? If the answer to question 2 is no, and the G 2/98 criteria are not applied, then the Enlarged Board should provide new criteria (question 4).

The fifth question relates to the "toxic divisional" attack, requesting clarification on the criteria to be applied. In essence, question 5 asks whether a family member (parent or divisional) can ever be prior art (novelty-only) according to Article 54(3) EPC.

Comments

The Enlarged Board is not expected to give its answers until late 2016, but when issued, they should clarify the concept of partial priority in Europe and provide some clarification regarding the relationship between family members with different effective dates.

However, until the Enlarged Board of Appeal provides its answers, disclosure of the priority application and the claims of all family members should be carefully examined before filing a European divisional application, in order to ensure that no collision among family member occurs.

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
 
In association with
Related Video
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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.