Tuesday, 26 May 2015

T 557/13 - Poisonous or nothing wrong?

At the closure of the debate in oral proceedings in T 557/13, the Chairman announced that the Board will refer one or more questions to the Enlarged Board of Appeal in relation to what is often referred to as partial priority, poisonous divisionals and poisonous priorities. The questions are not yet formulated - the decision will be given in writing.  The topic is however of such an interest that we want to post it already now on our blog -- we will come back to the topics once the referral is done. 

Background / Summary of Facts and Submissions

4.            The Board observes the following:

4.1          According to the decision under Appeal (Point 3.2 of the Reasons), the oil-soluble polar nitrogen compound illustrated by Example 1 of Dl was a cold flow improver fulfilling the definition of Claim 1 as granted, used for enhancing the lubricity of a fuel oil composition having a sulphur content of 0.001% by weight. The characteristics of the fuel and the results of the HFRR test showing the lubricity enhancement are apparent from pages 17 and 21 of D1. According to page 21 of Dl, a treat rate (i.e. a weight of active ingredient based on the weight of the fuel) (Dl, page 18, last paragraph), expressed in ppm by weight, of 1334 (0.1334% by weight) was used. This embodiment described in Dl thus appears to comprise all of the features of Claim 1 as granted in combination. This finding according to the decision under appeal (Point 3.2, second paragraph, last sentence), was not disputed by the Patent Proprietor (now Appellant).

4.1.1      Still according to the decision under appeal (Point 3.2, second paragraph, first sentence), the description of this embodiment illustrated in Dl was identical (emphasis added) to that provided in priority document D16, namely Example 1, characteristics of the fuel on page 19 and results of the test on page 22, so that this potentially novelty destroying embodiment of Dl was entitled to the priority date as claimed, which was before the effective filing date of the patent in suit.

4.1.2      However, in this respect, the Board cannot find in D16 the alleged identity of embodiments. Apart from the fact that in the HFRR test carried out according to examples of Dl friction was not measured, the HFRR examples of Dl comprise a number of distinctions over the examples of D16, as follows:

(a)       The sulphur content of Fuel I according to Dl (page 17) is 0.001 wt%, which is ten times smaller than the sulphur content of the fuel illustrated on page 19 of D16, i.e. 0.01 wt%,=.
(b)       The treat rates mentioned in Dl (see page 18, last paragraph) are expressed in ppm by weight of active ingredient based on the weight of the fuel, whereas the treat rates mentioned in D16 (see page 19, last paragraph) are generically given in ppm, i.e. need not necessarily be ppm by weight.
(c)      The treat rate mentioned in the results of the HFRR testing of the use of the product of Example  of D1 as cold flow improver is 1334 ppm by weight (see page 21)(0.1334%by weight), whereas the treat rate mentioned in the test results concerning the use of the product of Example 1 of D16 as cold flow improver (see page 22) is 2000 ppm (by weight? by volume?) (% by weight?).

4.1.3      The Patent Proprietor/Appellant did not rely on these apparent differences between the respective disclosures of D1 and D16, nor did it explain why they were not relevant. The parties should thus be prepared to take position regarding this issue, because the question may arise whether the invoked embodiment(s) described in Dl, and deemed to be novelty destroying, were identically contained in D16 or otherwise enjoy(s) the priority date of D16, i.e. whether the finding in the decision under appeal was correctly established.

4.1.4      According to the minutes of the oral proceedings before the Opposition Division, the uses of the cold flow improvers according to Examples 2 and 3 too were also discussed. They are, however, not dealt with in the decision under appeal.

4.1.5      Moreover, the use illustrated by HFRR testing of the cold flow improver according to e.g. Example 1 in Fuels II and III of Dl was not dealt with in the decision under appeal.

4.1.6      In any case, it is apparent that the HFRR testing of the product of e.g. Example 1 for cold flow improvement in Fuels II and III of Dl has no counterpart in D16.

4.1.7      As a matter of fact, the treat rate illustrated in the HFRR testing use in Fuel II, namely 60 ppm by weight, amounts to 0.006 wt.%, which is less than the minimum content (i.e. 0.01 wt.%) disclosed in D16 (see page 18, third full paragraph). Hence, it is not apparent how this embodiment based on Fuel II might enjoy the claimed priority date.

4.2          If the finding that at least one embodiments disclosed in D1 and comprising all the features of Claim 1 as granted also enjoys the priority date claimed were confirmed, than the following should still be considered.

4.2.1      One and the same "Example 1" is contained verbatim in the priority document (page 20), the parent application (page 19), the divisional application (page 19) and the patent in suit (page 6; Claim 7). This does not appear to be in dispute. These documents respectively refer in similar (?)/ identical(?) (supra) terms to the actual use of the specific product of Example 1 as cold flow improver in a fuel identified as Fuel I (Class 1 diesel fuel commercially available in Sweden), in an amount falling within the range of Claim 20 of D16, thus also within the range defined in Claim 1 at issue, in order to enhance the lubricity of a fuel composition having a sulphur content of at most 0.05% by weight, as required in any of said documents. Said use thus appears to fall within the terms of Claim 1 at issue (supra).
This also seems to be undisputed and even more evident from the fact that claim 7 as granted depends on Claim 1 at issue.

4.2.2      Hence, as also apparent from the parties' submissions, the issue of novelty apparently may hinge on the question of whether or not, under the circumstances addressed above, the patent in suit can validly claim a right of priority as regards the use of the product of Example 1 as cold flow improver, considering in particular that said use is merely embraced by the more generic definition of the invention according to Claim 1 at issue, rather than being clearly defined as a distinct alternative of the invention defined in Claim 1.

4.3          In this connection, the Board notes in particular that:

(a)          The questions raised in the present case concern the issue of so-called "partial priority", which is addressed in Article 88 (3) EPC and Article 4F PCT. As regards the expression "partial priority", attention is drawn to e.g. Schricker, Fragen der Unionsprioritat im Patentrecht, GRUR Int 1967, 85-93 (copy annexed to this communication).

(b)          In its letter of 3 November 2014, the Respondent held that the principles said to be established by EBA decision G 2/98 (OJ 2001,413) should be applied since this decision was of an higher order than the "additional considerations" contained in decision T 1222/11 of 4 December 2012 relied upon by the Appellant.

(c)           Decision G 2/98 is essentially focussed on the meaning of the requirement "the same invention" of Article 87(1) EPC. In Point 6.7 of the reasons of G 2/98, where reference is made to the so-called "FICPI Memorandum" (historical documentation related to the EPC, document M48/I, Section C), it is indicated that "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.".

However, G 2/98 does not indicate in more detail how a limited number of alternative subject- matters may be clearly defined in a claim using a generic term or formula.

The conclusion and the headnote of G 2/98 do not refer to said "claiming of a limited number of clearly defined alternative subject-matters", let alone in a situation of a potential partial priority. As pointed out by the parties, the case law does not appear to be consistently conclusive either as regards the practical application of said indications in G 2/98 to specific cases.

5.            Summing up, the Board understands that the potential legal uncertainty perceived by the parties with regard to this point of law, which they appear to consider as an important one, might require clarification by means of a referral to the Enlarged Board of Appeal, as requested by the parties.

5.1          Therefore, a possible outcome of the oral proceedings is that the Board hands down a decision to refer one or more questions regarding this point of law to the Enlarged Board of Appeal pursuant to Article 112(1) (2nd clause)(a) EPC.

5.2          During the oral proceedings, the Parties will thus also be heard regarding the meaning to be given to the sentence under point 6.7 of G 2/98 quoted above, and the appropriateness of a referral, taking into account also the relevant case law.
Letter of the Appellant dd 15.12.2014 regarding the oral proceedings of 17.12.2014 (citations):
The Appellant had indicated his intention to refer at the oral proceedings to Appendix 2 of his previous submissions (case-law table on partial priority). Following the Board's second communication, that summary has been revised to include T 571/10. We enclose revised copies for the convenience of the Board and Opponent.

In its first communication, the Board advised that it might decide to refer question(s) of law to the Enlarged Board. We note the Opponent has already made referral requests.

The Appellant has therefore considered its position on possible referral. In the event this topic is discussed at oral proceedings, the Appellant will refer to the enclosed draft referral questions, which capture his thinking in the light of the developing case law. For preparation purposes, we felt it was appropriate to circulate these questions in advance. They have the aims of :

•             referring the points of law relevant to the outcome of this appeal
•             In the order and circumstances they arise 
•             In a form that offers scope to review all the issues and consequences

We respectfully ask for their consideration should the Board of Appeal decide to refer the matter.

The Appellant gave a condensed and factual overview of case law where partial priority was accepted and partial priority was denied, and of 'self-collision' between parent and divisional in Appendix 2 of his letter.

The Appellant proposed possible referral questions:

Where a claim of a European patent or patent application encompasses more specific subject matter disclosed in an earlier application from which priority is claimed, for example because the claim in question contains generic term(s) or generic formula(e) encompassing both the subject matter disclosed in the priority application and alternative(s) thereto :
1.       Is the expression "provided that it gives rise to the claiming of a limited number of clearly- defined alternative subject matters" from Point 6.7 of Enlarged Board opinion G2/98 to be applied as the legal test for entitlement to partial priority under Article 88(2) and (3) EPC ?
2.       If the answer to 1 is 'yes', how is the test from Point 6.7 to be applied in this situation, and in particular, how is a claim containing generic term(s) or generic formula(e) to be interpreted as relating to a limited number of clearly-defined alternative subject matters ?
3.       If the answer to 1 is 'no', what is the legal test for partial priority of a claim containing generic term(s) or generic formula(e), and how is it to be applied to such a claim ?
In the situation defined above, where :

(i)           the European patent was, or the European patent application is, a divisional application
("Divisional") and the claim in question fails the legal test for partial priority as clarified above;
(ii)        the parent European patent or patent application ("Parent") claims the same priority and,
as published, discloses specific subject matter also disclosed in the priority application
and encompassed by the claim of the Divisional; and
(iii)      the Parent and Divisional designate the same EPC contracting states:
4.       Does Article 76(1) EPC nevertheless prevent different effective dates being attributed to the claim of the Divisional and the priority-entitled specific subject matter in the Parent?
5.       If the answer to 4 is 'no', is the term 'European patent applications' in Article 54(3) EPC to be interpreted as extending to the Parent application, thereby rendering the Divisional lacking in novelty over its Parent?

Reasons for the Decision - minutes of the oral proceedings of 17.12.14:
The Chairman declared the oral proceedings open.
He summarised the relevant facts as appearing from the file.

The appellant (patent proprietor) requested that the decision under appeal be set aside and that the patent be maintained as granted (main request) or, in the alternative, on the basis of the set of claims according to the auxiliary request 1 filed with the statement setting out the grounds of appeal.

The respondent (opponent) requested that the appeal be dismissed. Prompted by the Board, the respondent confirmed that it had no objections under Article 100(c) EPC with regard to the claims of the patent as granted (main request).

The parties were then heard on the compliance of claims of the patent as granted (main request) with the requirement of novelty.

In this connection, both parties addressed the issues raised by the board in its communication of 26 November 2014, in particular Point 4.1.2, and expressly confirmed the identity of (inter alia) the use of the compounds of example 1 as disclosed in D1 and D16, respectively.

The appellant requested to refer the questions submittedwith letter of 15 December 2014 to the Enlarged Board of Appeal.

The parties were then heard as regards the appropriateness of a referral.

The respondent declared that it agreed with the request for referral to the Enlarged Board of Appeal.

After a break for deliberation by the board, the Chairman informed the parties that the board intended to refer one or more questions to the Enlarged Board of Appeal.

Upon request by the Chairman the parties declared that they had no further requests, arguments or comments.

The Chairman then declared the debate closed and announced that the Board will refer one or more questions to the Enlarged Board of Appeal and that the decision will be given in writing.

The Chairman then closed the oral proceedings.

What will the exact questions be that the Board will refer?
What scope will the Enlarged Board cover?
Only the parent-divisonal situation, or also other Art.54(3) EPC between parallel applications of the same applicant claiming priority from one another, or independently filed but associated with species and genus / narrow and broad subject-matter?

A very strict interpretation of Art.54(3) EPC will lead to every later application to a genus claiming priority from an earlier application describing only a species to be Art.54(3) against not only its divisional or its parent, but also against itself: Art.54(3) EPC is NOT limited to "other" applications being possible prior rights, but includes if taken literally and in isolation of its legal history also to the application itself - as the priority assessment is since G 2/98 done per subject-matter...
What is the meaning of "limited number of clearly defined alternative subject-matter" of r.6.7 of G 2/98? Does it required to be separable alternative embodiments - T 1877/08 -, or is it not required to be an explicit or implicit disclosure - T 1222/11-. (Thx to Eric Duval - see acknowledgment below).

Interesting topics!

This decision has no European Case Law Identifier yet. The minutes if the oral proceedings can be found here, and the earlier communication dd. 26.11.2014 of the Board here, and the proposal from the appellant here. The file wrapper can be found here (EP98203458)
Photo "Poison Dart Frog (Dendrobates azureu)" by Cliff obtained via Flickr under CC BY 2.0 license (no changes made).

The author wants to thanks Eric Duval (EPO) and the participants to the "Get your priorities right" session WS09, and Berthold Rutz (EPO) and the participants to the "'Poisonous'  divisionals and partial priorities" session WS013 at Examination Matters 2015 (EPO The Hague, 16-17 April 2015) for drawing attention to this decision in T 557/13.
Also see "Case Law of the Boards of Appeal of the European Patent Office", 7th Edition (September 2013) II.D.4.3., and our earlier blog on "T 571/10 - Partial PRI / OR / ITY"., and various articles by others, e.g. The Doctrine of Partial and Multiple Priorities, especially from the standpoint of Toxic Priority, by M. Lawrence and articles in epi information 3/2014 and 3/2013.


  1. "A very strict interpretation of Art.54(3) EPC will lead to every later application to a genus claiming priority from an earlier application describing only a species to be Art.54(3) against not only its divisional or its parent, but also against itself"
    I do not think there is an issue, if you generalise a claim, you have to avoid publication of the priority EP patent file that contains the species claim, if you want to avoid A 54-3. But maybe the ELBA will tell I am wrong....

    1. I think that by "very strict" Roel means that an application could destroy its own novelty under Art. 54(3).

      For example:
      US priority discloses (only) a species. Obviously this document will never be 54(3)-prior art itself.
      EP claims priority from US, discloses species and genus and claims genus.

      Now the species subject-matter in EP "enjoys" priority from US, but the claimed genus does not. Upon publication of EP, the species subject-matter in EP becomes 54(3)-prior art for the claimed genus and anticipates it. Ouch.

      This is probably a very common situation if you really start looking for it. The priority document might be some US provisional application that discloses some embodiments but lacks a good basis for a more generic claim (probably no big deal under US patent law, but I don't really know). There might even be a (later) US priority document that is identical to the EP application, but that won't help. Dropping the "poisonous" priority claim probably helps, but it would have to be done before the EP is published.

  2. The number of the referral is G 1/15.

    Oral proceedings were held on 7 and 8 June 2016. Tufty the Cat gave a summary of the (first day of the) oral proceedings:

    According to his blog, "At the end, the Chairman announced that a decision would be made "as soon as possible", but that this would be by November this year."