Tuesday, October 30, 2018 T 0969/14 - partial priorities' transfer

This is an interesting appeal lodged against an opposition decision to revoke a European patent on the ground of novelty under Art. 54(3), EPC.
The situation is as follows:

D16 is a European patent application filed on 27/06/2000 by applicant Chiesi.
D14 is a PCT application filed on 17/04/2001 by Chiesi claiming priority of D16.
EP (contested patent) is filed by applicant Vectura on 17/04/2001 claiming also priority of D16.
The case relates to two inventions A and B, where A encompasses B. EP claims A and D14 claims B. D16 discloses both A and B.

Companies Chiesi and Vectura had a joint-venture where it was agreed about the ownership of the respective IP. The rights of ownership of D16 was assigned from Chiesi to Vectura before filing of EP. However, B's right of priority remained with Chiesi in a re-assignment of the priority right from Vectura to Chiesi.  

The result is that Vectura owns a valid priority right only for (A-B) but claims A which is broader. The consequence is that claim 1 of EP is not novel over D14 under Art. 54(3), EPC because D14 validly claims priority of D16 for B, thereby confirming the decision of the Opposition Division.  

When Vectura files a fourth auxiliary request in appeal proceedings disclaiming B from A, i.e. based on (A-B), for restoring the priority right, it is too late. The BoA does not admit said request into the appeal proceedings. 

The logical conclusion is that an applicant cannot transfer a partial priority right and at the same time keep it for claiming in a broader context.

Tuesday, October 02, 2018 T 1399/13 - On the size of the hole

The allowability of an undisclosed disclaimer to establish novelty over an Art.54(3) prior right was challenged in opposition. Major topics of the debate were whether the disclaimer removed more than necessary to restore novelty over the prior right and whether the disclaimer and the claim with the disclaimer were clear and concise. 'With regard to the conditions that the disclaimer meets the requirements of clarity and conciseness and does not remove more than necessary to restore novelty, both explicitly indicated in G 1/03 (see headnote, points 2.2 and 2.4), the Board concurs with the positions expressed in T 2130/11, points 2.9 and 2.10*. In particular, the difficulty for a patent proprietor in formulating an allowable disclaimer cannot justify an exception in the application of Article 84 EPC which is not foreseen in the Convention, not even with regard to the condition on the allowability of a disclaimer requiring that a "disclaimer should not remove more than is necessary to restore novelty". Rather, that condition should be applied while taking into consideration its purpose, namely that the "necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily" (G 1/03, supra, point 3 in the reasons, second paragraph, last but one sentence).'  Although not the reason for selecting it for this blog, the decision also has another interesting aspect: the decision applies the partial priority decision G 1/15 in reasons 1.4.2-1.4.5.

Wednesday, January 24, 2018 T 282/12 - Partial priority and "the first application": partial first application

May a priority application and an even earlier application filed by the same applicant partially relate to the same invention, just as the priority application and a patent claiming priority therefrom may partially relate to the same invention (whereby the latter may benefit from partial priority under G 1/15)? If so, the priority application would be the first application in respect of only that part of the invention which is not the same as in the earlier application and priority would only be valid for that part, but not over the full scope of the claim. This was the key point in this decision.

Friday, September 01, 2017 T 1519/15 - Not so poisonous parent

A 'family' of Amanita muscaria, which is best not eaten

This Examination Appeal shows the Board applying G 1/15 to what would otherwise have been a 'poisonous parent' situation. The outcome is as expected - the decision under appeal is set aside.

The Examination Division considered , pre-G 1/15, the situation as follows: claim 1 of the divisional application represents a generalization with respect to a species described in an earliest US priority document P1, and thus is, in accordance with the pre-G/15 legal situation, in its entirety entitled only to a later priority date from a US priority document P2. The EP parent application, which is cited as D3, also describes P1's species and is thus, at least in as far as pertaining to this species, entitled to the earliest priority date P1. D3 thus belongs, at least in as far as the described species, to the Art. 54(3) State of the Art of the divisional application and thus takes away the novelty of claim 1.

Tuesday, May 30, 2017 T 260/14 - Partial priority for a working example of a generic claim feature

The opposition division did not allow the main request as it considered  the priority application to be prior art pursuant Art. 54(3) EPC and the generically worded claim 1 of the main request to be anticipated by an examplary dental impression material disclosed in the priority application ('poisonous priority'). The proprietor appealed and argued that partial priority should have been recognized, following the principles of G 1/15. In the opponent's view, the claim was not entitled to partial priority and the working example of the priority document (also present in the granted patent) destroyed the novelty of the claim. In the decision , the Board carefully explains how G 1/15 is to be applied, and confirmed partial priority for the part of claim 1 concerning the working example. Consequently, the claim was novel.

Thursday, February 02, 2017 G 1/15 (2) - The decision on partial priority

The Order was already issued by the Enlarged Board in November last year, but the full decision and its reasoning became available only just now. The Enlarged Board considered the EPC priority provisions of Art. 87(1), 88(2)-(3) and 89, Paris Convention Priority and the FICPI Memorandum in detail to come to its decision. The right to claim priority and its effect/ purpose (reason 4) led the Enlarged Board to conclude that a generic claim encompassing alternative subject matter may not be refused partial priority, 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. 

Wednesday, November 30, 2016 G 1/15 (1) - Order from the Enlarged Board

The order of the decision of the Enlarged Board in the partial priority referral, G 1/15, was issued. The reasoned decision will be issued as soon as possible.

See file wrapper, and our earlier posts Poisonous or nothing wrong? and Referral: Mother poisonous for child?

Tuesday, June 07, 2016 T 239/13 - Wait to be poisoned, or not

Today and tomorrow, oral proceedings for the referral G 1/15 "poisonous priorities/ poisonous divisionals / poisonous parents" (by T 557/13, pdf; amicus curiae briefs) are held. This opposition case is stayed in view of the relevance of the referral for the validity of priority for its independent claim.

Sunday, August 23, 2015 T 557/13 - Referral: Mother poisonous for child?

This case refers five questions to the Enlarged Board of Appeal with respect to what is often referred to as partial priority, poisonous divisionals and poisonous priorities. This case has been discussed earlier in this blog, see our post "T 557/13 - Poisonous or nothing wrong?". 
The opposition decision under appeal relates to a patent that is a divisional from  D1 (which is an EP patent enjoying priority from D16). The divisional also claims priority from D16. The Opposition Division decided that claim 1 of the patent of this appeal case does not enjoy the priority from D16 and, thus, the filing date of D1 is the effective date of claim 1. It may be that the opinion of the Opposition Division is now summarized too much, but, according to the Opposition Division is D1 is an Art. 54(3) EPC document because the effective date of D1 is the priority date of D16, and D1 is published after the effective date of claim 1. 
An additional complication in this case is that claim 1 of the divisional application is a so-termed "generic 'OR'-claim" (see point 8.2.2 of this decision for a definition). Subsequently one could argue that a first portion of claim 1 enjoys priority from D16 and D1 is not an Art. 54(3) EPC document for this first portion, while another second portion of claim 1 does not enjoy priority from D1 and, consequently, the novelty of this second portion must be examined over D1 as an Art. 54(3) EPC document. 
Furthermore, the parties to the appeal proceedings had a diverging opinion about "Can a parent application of a divisional application be a novelty destroying Art. 54(3) EPC document?".
The Board of Appeal could not decide on these subjects because, as extensively discussed in the decision, the case law diverges in different directions. Therefore the Board formulated five questions for the Enlarged Board of Appeal. 

Tuesday, May 26, 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