European Union: Antidote To Toxic Divisionals—European Patent Office Rules On Partial Priorities

Beginning in 2009, the Boards of Appeal of the European Patent Office ("EPO") issued a series of decisions that essentially created a new priority law in Europe that allowed members of the same patent family to negate each other's novelty. Notions such as "poisonous priorities" and "poisonous or toxic divisionals" emerged, threatening patent holders and raising concerns among patent practitioners and scholars. Confirming principles established for priority rights by the Paris Convention, the recent decision G1/15 of the Enlarged Board of Appeal of the EPO ("EBA" or "Board") has put an end to this jurisprudence.

Summary of the Enlarged Board of Appeal's Decision

The EBA recently issued its decision G 1/15 that deals with the question of whether entitlement to partial priority for a claim encompassing alternative subject matter, by virtue of one or more generic expressions or otherwise (so-called generic "OR"-claim), may be refused in case the subject matter of such a claim would be broader compared to what has been disclosed in the priority document.

The concept of "partial priority" refers to the situation in which part of the subject matter of a claim is entitled to the priority date of a single earlier application and the remaining subject matter is entitled to the priority date of a later priority document or of the application itself. The aforementioned concept has become particularly relevant for patent families comprised of divisional applications wherein the content of one application (e.g., divisional) was awarded the priority of an earlier priority application and the claim of another application (e.g., parent) was only awarded the priority of a later application (e.g., the application date) because it was broader than the content of the earlier priority application. In such a situation, the publication of the earlier priority document (in case it was a European patent application), or the later filed divisional application, could destroy the novelty for the subject matter of the parent application. Such terms as "poisonous priority" or "toxic divisional" were coined to describe this situation.

In construing the relevant provisions of the European Patent Convention ("EPC"), the EBA concluded that under the requirements of the EPC, priority may not be refused on the ground that an application claiming one or more priorities contains one or more elements that were not included in the application(s) for which priority is claimed. The EBA went on to state that in case the subject matter, which is claimed in the application or in the patent claiming said priority, has been disclosed for the first time, directly, or at least implicitly, unambiguously, and in an enabling manner in the priority document, partial priority is given. No other substantive conditions or limitations apply in this respect.

With this decision, the EBA has introduced a conceptual split of the subject matter of a claim into two (or more) parts with each enjoying its own partial priority. As a result, it will no longer be possible for a divisional application to be cited as prior art against its parent application or vice versa.

Background

This is the third time that the EBA has had to decide under which conditions an application can claim priority from an earlier application.

The generally accepted interpretation of the concept of priority established by the Paris Convention for the Protection of Industrial Property ("Paris Convention"), in particular Article 4A(1), is that the subsequent filing had to concern the same subject matter as the first filing on which the right of priority was based.

In its decision G 3/93 (Headword: "Priority Interval"), the EBA considered that a claimed subject matter consisting of the features A + B + C is different from a combination containing only the features A + B, irrespective of the nature of the added element. In such a case, the claimed combination of A + B + C could not claim priority from a document disclosing features A + B only.

In its decision G 2/98 (Headword: "Requirement for Claiming Priority of the 'Same Invention'"), the EBA had to decide under which conditions a claim can enjoy multiple priorities. In evaluating multiple priorities for the same claim of an application, the EBA made a distinction between the following situations:

  1. "AND"-claim (combination A + B versus A in the priority document)
  2. "OR"-claim (combination A or B (or C including A and B) versus A in the priority document).

The Board concluded that "it clearly follows that, according to the legislator, multiple priorities as exemplified in (i) cannot be claimed for an "AND"-claim." In contrast to this, the Board ruled that if a first priority document discloses a feature A, and a second priority document discloses a feature B for use as an alternative to feature A, then a claim directed to A or B can enjoy the first priority for part A of the claim and the second priority for part B of the claim. These two priorities may also be claimed for a claim directed to C, if the feature C, either in the form of a generic term or formula, or otherwise, encompasses feature A as well as feature B. According to the Board in G 2/98, "the use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2), second sentence, EPC is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters."

In a number of Technical Board of Appeal ("TBA") decisions following decision G 2/98, the phrase "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" has been taken as justification for refusing partial priority for a generic "OR"-claim. The basis for this decision goes back to case law in the field of chemistry. Chemistry case law generally rules that a generic formula in a claim does not spell out every possible alternative compound in individualized form and that even if such compounds might be intellectually envisaged to fall within the scope of the claim, it does not make up for a clear and unambiguous presence of these alternatives, individualized as such, in the claim. This means, for example, that the sole mention of halogen in a claim does not disclose the individualized forms of fluorine, chlorine, bromine, or iodine, per se.

Following decision G 2/98, there have also been Board of Appeal decisions acknowledging partial priority in scenarios as described above, the Opposition Division in the case leading to the interlocutory decision T 557/13, on which decision G 1/15 is based, came to the conclusion that the subject matter of the claims did not represent the same invention as that set out in the priority document because the claims resulted from a generalization of a more specific disclosure in the priority document. Consequently, the priority was held invalid.

Since the law before and after G 2/98 has not been applied uniformly and because the right to claim priority is a question of fundamental importance, the TBA in case T 557/13 referred the following questions to the EBA:1

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?

...

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?

T 557/13 concerned European patent No. 0 921 183 ("183 patent"), which was granted based on a divisional application of European patent application No. 95 923 299.2 ("parent application"). Claim 1 of the 183 patent was broader both in relation to the generic definition of the compound used as well as to the weight range of this compound in the composition. Since the subject matter of claim 1 was defined by a generic formula and a continuous range of numerical values, such a claim could be viewed as a generic "OR"-claim encompassing, without spelling them out, alternative subject matters having all the features of the claim.

Decision of the EBA

Additionally, in preparation for the oral proceedings, the EBA invited the President of the European Patent Office and third parties to give their views on the points referred.

The President of the EPO stated that the strict approach adopted by some Boards of Appeal seems to be at odds with the EBA jurisprudence, whereas the broader approach may be too abstract in the light of the requirement for "the claiming of a limited number of clearly defined alternatives" stipulated in G 2/98.

The amicus curiae briefs filed with the EBA represented arguments in favor of a negative answer to question one and represented arguments in favor of a positive answer to question one.

The EBA made it clear that, in order to answer the questions posed, it was vital to interpret the intended meaning of the phrase "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" in decision G 2/98 (reasons point 6.7). An interpretation of the intended meaning would indicated whether it gives rise to a further test to be complied with for a claim to partial priority.

Before addressing this question, the EBA examined the legal framework of the concept of priority as provided by the EPC. According to the EBA, priority is a right and where a right is established by an international treaty or convention, or by national law, it cannot be restricted by imposing supplementary conditions in administrative rules or guidelines or even in jurisprudence.

With respect to both partial and multiple priorities, the EBA stated that Article 88(3) EPC2 is to be interpreted in such a way that the elements which can be directly and unambiguously derived from the one or more priority applications constitute what may benefit from partial priority. According to the EBA, if a claim in the later application is broader than an element disclosed in the priority document, then priority may be claimed for such element, but not for all other embodiments encompassed by the claim(s). Further, the sole substantive condition for validly claiming priority is that the priority document and the subsequent filing are directed to the same invention (Article 87(1) EPC and Article 4C(4) of the Paris Convention ("same subject")). Thus, the EBA came to a conclusion that the proviso laid down in G 2/98 cannot be construed as implying a further limitation of the right of priority.

Finally, the EBA addressed how an assessment of the "same invention" has to be carried out. According to G 2/98, the concept of "the same invention" required that "the skilled person can derive the subject matter of the claim directly and unambiguously, using common general knowledge, from the previous [priority] application as a whole." This statement of the EBA was made in the context of multiple priorities for the same claim.

However, in answering the question how partial priority of a generic "OR"-claim has to be assessed, the EBA here stated that (i) the relevant subject matter disclosed in the priority document has to be determined in accordance with the disclosure test laid down in the conclusion of G 2/98, and (ii) it needs to be determined whether or not this subject matter is encompassed by the claim of the application claiming said priority. If the answer is yes, the claim is conceptually divided into two parts, the first corresponding to the invention disclosed directly and unambiguously in the priority document, the second being the remaining part of the subsequent generic "OR"-claim not enjoying this priority.

Thus, according to the EBA, question 1 was to be answered in the negative. As a consequence, the situation of "toxic divisional applications" reflected in question 5, could not occur.

Comments on the Decision

In its decision, the EBA put specific emphasis on the intention of the legislator and the interpretation of the concept of priority in the EPC in view of international treaties and regulations, such as the Paris Convention. This is a welcome approach which has led to the finding that no specific substantive conditions or limitations apply with respect to the assessment of a priority claim.

In view of this approach, the EBA decided that two issues need to be examined to assess priority of a generic "OR"-claim. First, the relevant subject matter in the priority document has to be determined, and second, it has to be determined whether or not this subject matter is encompassed by the claim of the application claiming said priority. The strict "same subject matter" approach established in G 2/98 is not applicable when it comes to the assessment of priority of a generic "OR"-claim. Instead, the subject matter of any claim may conceptually be split up into parts which may not have been individualized as such, but are encompassed by the claim.

In simple words, this can be explained with the following example: the priority document discloses "chlorine" and the application claiming priority from said priority document claims "halogen." In this situation, according to G 1/15, the claimed subject matter may be conceptually split up in two parts having different priority dates even though chlorine itself was not mentioned specifically. The first part comprises "chlorine" and enjoys the priority date of the priority document, whereas the second part comprises "halogen minus chlorine" and only enjoys the filing date of the application. This automatically leads to the effect that an application from the same patent family having the same priority date cannot be prior art for assessing novelty of the parallel application.

Conclusion

The referral to the EBA dealt with the question whether a claim to priority for a generic "OR"-claim may be refused if the claimed alternative subject matter has been disclosed directly, or least implicitly, and unambiguously in the priority document. The answer to this questions is directly associated with problem of "toxic divisionals" as explained above.

Now, with decision G 1/15, the problem of "toxic divisionals" appears to have been overcome as the EBA clearly states that, for assessing priority, a conceptual splitting of the claimed subject matter is possible in order to arrive at partial priorities so that there can be no collision of subject matter disclosed during the priority period with identical subject matter disclosed in a priority document.

Footnotes

[1] For detailed review of the referral decision, please see Jones Day Commentary (August 2015): " Partial Priority and Dealing with 'Toxic Divisionals' under the European Patent."

[2] Article 88(3) EPC: "If one or more priorities are claimed in respect of a European patent application, the right of priority shall cover only those elements of the European patent application which are included in the application or applications whose priority is claimed."

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
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Related Articles
 
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
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