Poisonous Priorities and Toxic Divisionals

Practical Consequences of Art. 54(3) EPC

Cristina Lopes Margarido European Patent Office Mathieu de Rooij ZBM Patents & Trademarks

Overview
Relevant articles of EPC for determining prior art Relevant articles of EPC for determining a right to priority Usual pitfalls when claiming priority and how to avoid them. Enlarged Board of Appeal decision G2/98 regarding having more than one priority date for a single claim Examples of self-collision by priority application and by divisional application Interesting litigation (Novartis v. Johnson & Johnson; Nestec v. Dualit) Conflicting Board of Appeal decisions Advice on how to avoid self-collision and use it against others

Legal framework prior art

Art. 54(1) EPC: An invention shall be considered to be new if it does not form part of the state of the art. Art. 54(2): The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application. Art. 54(3): Additionally, the content of European patent applications, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art. Art. 56: () If the state of the art also includes documents within the meaning of Article 54(3), these documents shall not be considered in deciding whether there has been an inventive step.

Art. 54(1) and (2) EPC

Filing date 01.09.2011 2007 2008 2009 2010 2011 2012 2013

time

Everything made available to the public before the date of filing

Article 54 EPC

Article 54(3)

EP1 Filing date 01.12.2010

Filing date 01.09.2011 2012

EP1 Publication 01.06.2012

time

For assessing novelty, EP1 is part of the state of the art! EP1 must be regular publication

P documents

application

priority date

filing date

D1 filing date publication date

E documents
application

priority date D1 filing date D1 filing date (no priority claimed) D1 priority date filing date

filing date

publication date

publication date

publication date

Article 54(3)

Disclosure available before filing/priority date of the application

no

yes

Disclosure is normal prior art

Is the disclosure an EP or a PCT application? *

yes

Does document have earlier priority rights than the applic.? no

yes

Document is prior art for novelty only.

no

Document is not prior art

* PCT application having entered EP regional phase

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Legal framework priority

Art. 87(1) EPC: Any person who has duly filed () an application for a patent () or his successor in title shall enjoy for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application. Art. 88(2) EPC: Multiple priorities may be claimed in respect of a European patent application, notwithstanding the fact that they originated in different countries. Art. 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.

Legal framework priority

Art. 88(4) EPC: If certain elements of the invention for which priority is claimed do not appear among the claims formulated in the previous application, priority may nonetheless be granted, provided that the documents of the previous application as a whole specifically disclose such elements.
Application claiming priority priority may be valid for this part of the application only Priority document

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Effect of priority
Article 89 EPC The right of priority shall have the effect that the date of priority shall count as the date of filing of the European patent application for the purposes of Article 54, paragraphs 2 and 3, and Article 60, paragraph 2.

If two or more persons have made an invention independently of each other, the right to a European patent therefor shall belong to the person whose European patent application has the earliest date of filing, provided that this first application has been published.

What is comprised in the state of the art

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Priority

Paris Convention or WTO members First filing "Priority" State A State B

State C

State D

**

12

months

* Entitled to use the priority date as the first filing date ** NOT entitled to use the priority date as the first filing date
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Priority and date of filing

If a first application (first filing) has been filed in a WTO or Paris Convention State; a later application can claim priority for the same subject matter disclosed in the first application; provided that the date of filing of the latter application is no more than twelve months away from the first application date of filing; in this case, for the purposes of Article 54 EPC (novelty), the date of priority is counted as the date of filing.

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First pitfall when claiming priority

Art. 87(1) EPC: Any person who has duly filed () an application for a patent () or his successor in title shall enjoy for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application. FIRST PITFALL: the subsequent European application (or PCT application entering EP national phase) is not filed by applicant of priority document or his successor in title US regular filing or US provisional filing in name of inventors, and subsequent EP/PCT filing in name of company
Art. 87(1) A person who has filed or his successor in title. Cannot be remedied by assignment / transfer after filing of the EP

application
Assign all rights or at least priority rights to company before filing

EP/PCT. Alternatively, file PCT application in name of all inventors.

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First pitfall when claiming priority

Art. 87(1) EPC: Any person who has duly filed () an application for a patent () or his successor in title shall enjoy for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application. FIRST PITFALL: the subsequent European application (or PCT application entering EP national phase) is not filed by applicant of priority document or his successor in title US regular filing or US provisional filing in name of inventors, and subsequent EP filing in name of company
T 788/05: a second filing by a sole applicant who was one of several

joint applicants on a first filing cannot give rise to separate priority right
T 5/05 inventorship not important, applicant decisive for entitlement to

priority
Edwards Lifesciences AG v. Cook Biotech Incorporated. Priority

application three inventors. Only one worked for Cook. Assignments were not filed until after filing of PCT application
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Second pitfall when claiming priority

Art. 87(1) EPC: Any person who has duly filed () an application for a patent () or his successor in title shall enjoy for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application. SECOND PITFALL: the subsequent European application (or PCT application entering EP national phase) is not filed in respect of the same invention
EPO applies the same strict standard as with respect to added

subject-matter
directly and unambiguously derivable from the (priority) application

as filed (G 2 /98).
novelty-type test advisable to include claims in US provisional applications

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Third pitfall when claiming priority

Art. 87(1) EPC: Any person who has duly filed () an application for a patent () or his successor in title shall enjoy for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application. THIRD PITFALL: the application from which priority is claimed is not the first application. Claiming priority from a continuation or a continuation-in-part.
A continuation application will by definition not be the first application

in which the invention was disclosed.

A continuation-in-part could give rise to valid priority claim, if priority

claim relates to new matter.

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Legal framework
Art. 54(3) EPC: Additionally, the content of European patent applications, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art. Art. 87(1) EPC: Any person who has duly filed () an application for a patent () or his successor in title shall enjoy for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application. Art. 88(2) EPC: Multiple priorities may be claimed in respect of a European patent application, notwithstanding the fact that they originated in different countries. Where appropriate, multiple priorities may be claimed for any one claim. () G 2/98 AND claims and OR claims
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G 2/98
same invention: priority of a previous application () is to be acknowledged only if the skilled person can derive the subjectmatter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole

PRIO 1

EP FILING 2

12 months

PRIO1 CLAIM, DESCRIPTION = A

EP FILING 2 Claim 1 = A (prior. PRIO 1, date x) Claim 2 = A+B (date y)

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G 2/98
... distinction has to be made between the following situations: (i) "AND"-claim (ii) "OR"-claim multiple priorities can be claimed in an OR claim, if each alternative has a different priority date multiple priorities cannot be claimed for an "AND"-claim. Hence, the application of the so-called "umbrella"-theory (according to which the feature A in the claim directed to A+B would enjoy a partial priority from the first priority date, with the result that the feature A could under no circumstances become state of the art in relation to the claimed invention A+B) is to be disregarded. "OR"-claim: 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 [disclosed in Pr1] as well as feature B [disclosed in Pr2 as alternative to A]. The use of a generic term or formula in a claim for which multiple priorities are claimed () is perfectly acceptable (), provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters.

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G 2/98
For example The use of a generic term or formula in a claim for which multiple priorities are claimed () is perfectly acceptable (), provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters.
PRIO 1 EP FILING 2

12 months

PRIO1 CLAIM, DESCRIPTION = A + B + fluorine

EP FILING 2 Claim 1 = A + B + halogen This claim has more than one priority date A+B+fluorine : priority date X A+B+other halogens: priority date y

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G 2/98
But The use of a generic term or formula in a claim for which multiple priorities are claimed () is perfectly acceptable (), provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters.
PRIO 1 EP FILING 2

12 months

PRIO1 CLAIM, DESCRIPTION = A + B + C, wherein C is round

EP FILING 2 Claim 1 = A + B + C This claim only has a right to date y. (if there is a limited number of clearly defined alternative shapes for C other than round, the round shape could have a right to date x)

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Poisonous priority 1
EP 2 claims priority from EP 1
EP 1 EP 2

12 months

EP 1 CLAIM, DESCRIPTION = A + B + C, wherein C is round

EP 2 Claim 1 = A + B + C This claim probably only has a right to date y.

Effective date for EP 2 is y EP 1 has filing date before EP 2. If EP 1 is published, it destroys the novelty of EP 2. Solutions:
Abandon EP 1 before it is published No priority founding application in Europe / PCT But beware of toxic divisionals!
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Toxic divisionals 1
EP 2 claims priority from US 1
US 1 EP 2 DIV EP 2

12 months

US 1 CLAIM 1= A + B + C, wherein C is round DESC : D + E + F

EP 2 Claim 1 = A + B + C The claim only has a right to date y.

DIV EP 2 CLAIM 1= D + E + F DESC = A + B + C, wherein C is round

Effective date for EP 2 is y US 1 has filing date before EP 2. DIV EP 2 validly claims filing date of EP 2 and validly claims priority date x for novelty destroying embodiment. DIV EP 2 belongs to state of the art according to Art. 54(3) EPC
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DIV EP 2 therefore potentially invalidates EP 2. Are there a limited number of clearly defined alternative subject-matters?

Other possible self-collision

Ciba-Geigy & Novartis (Nov), v. Johnson & Johnson (JnJ)

Pr1, Pr2, Pr3 Three different priority dates

EPHop EPDom

EP

National phase applications after PCT.

Simplified Claim 1 of EP:

Ophtalmic lens made of a polymer of two polymerizable materials, one of them having

oxygen diffusion rate higher than x and the other having a ion or water diffusion rate higher than y
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Novartis v. Johnson & Johnson

Pr1, Pr2, Pr3

EPHop EPDom

EP

Simplified Claim 1 of EP:

Ophtalmic lens made of a polymer of two polymerizable materials, one of them having

oxygen diffusion rate higher than x and the other having a ion or water diffusion rate higher than y

However, Pr 1 and Pr2 do not mention these parameters, or values x and y, or ways to measure these parameters. EP can only validly claim priority of Pr3 !? EPHop and EPdom therefore belong to the state of the art according to Art. 54(3) EPC
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Novartis v. Johnson & Johnson

Pr1, Pr2, Pr3

EPHop EPDom

EP

EPHop and EPDom describe some materials and examples which also belong to invention of EP JnJ arguments:
claim 1 of EP is AND claim Does not have right to priority date Some embodiments of EPHop and EPDom destroy novelty

Novartis arguments
Claim 1 of EP is OR claim For the embodiments disclosed in EPHop and EPDom has right to

priority
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For the embodiments not disclosed therein does not have right to

priority (but there is no novelty destroying prior art)

Nestec v. Dualit (UK Patents Court)

Relates to Nespresso coffee machines and capsules (suitable for these coffee machines)
Extraction system comprising

a device for the extraction of a capsule and a capsule (16) that can be extracted in the device;
the capsule (16) comprising a

guide edge in the form of a flange, the device comprising

a first fixed part (2), a second part (3) which is

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moveable relative to the first part, a housing (4) to receive the capsule and defining, in the closed position of the moveable part against the fixed part, a position for extracting the capsule on an axis (25) in said housing,

Nestec v. Dualit (UK judge Arnold)

It is common ground that claim 1 of the Patent covers arrangements in which the housing to receive the capsule (integer 1E) is contained in either (i) the movable second part (integer 1D) or (ii) the fixed first part (integer 1C) or (iii) divided between the movable part and the fixed part, as disclosed at [0011] of the Patent. It is also common ground that only the first of these arrangements is disclosed in the Priority Document. The dispute is as to the consequences of this. Dualit contend that it follows that claim 1 is not entitled to priority. Nestec contend that claim 1 is entitled to partial priority: it has priority with regard to option (i), but not options (ii) and (iii). Who is right depends on whether these three arrangements are clearly defined alternatives. In my judgment option (ii) is a clearly defined alternative to option (i), but the same cannot be said of option (iii). Option (iii) is not actually a single arrangement at all. It covers a whole range of different arrangements everything that is not covered by options (i) or (ii). Furthermore, some of the arrangements covered by option (iii) (housing mainly in the movable part) would be quite similar to option (i) and others (housing mainly in the fixed part) would be quite similar to option (ii). Thus option (iii) is not a clearly defined alternative to options (i) and (ii)

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Nestec v. Dualit
Other issues of
Contributory infringement Priority claim

UK Appeal pending Oral Proceedings before EPO Board of Appeal on same case October 9th, 2013. Patent Revoked. Reasons not yet publicly available.

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EPO BoA Interpretation of G 2/98

The use of a generic term or formula in a claim for which multiple priorities are claimed () is perfectly acceptable (), provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters. Some EPO BoA decisions:
T 1127/00: G2/98 requires basis for individualization of embodiments

in the claim.
T 1877/08: G 2/98 requires "separable alternative embodiments"

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EPO BoA Interpretation of G 2/98

T 184/06: relates to a liquid composition comprising
a hypohalite bleach, comprising 3 to 8% by weight of an alkyl(alkoxy)n

sulphate, wherein n is from 0.5 to 20, and a stabilizing agent which is a chelating agent. Priority document: n is from 2 to 4 (and additional specific features) Priority is not valid and priority document is novelty destroying Not an OR claim: the invention claimed in the patent in suit relates to a composition of matter, characterized by a combination of features which cannot be regarded in isolation from each other, which subject-matter encompasses everything falling within its scope defined by its essential features and does not relate to specific distinct alternatives having different scope for which different priorities could be claimed.

T 1496/11: relates to a security document

characterized in that self-verification means of the first portion (5)

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comprises an optical lens (11) and the security device provided at the second portion (4) comprises a feature (10) which can be inspected, enhanced or optically varied by the optical lens when the first and second portions (5,4) are brought into register." Priority document: printed or embossed feature Priority date not validly claimed, because features made by hot-stamping or lithography are now included Divisional application destroys novelty!

EPO BoA Interpretation of G 2/98

T 665/00: relates to microspheres
Priority document claims < 0.5 grs, has specific embodiments of 0.04

grs
Patent claims < 0.1 grs According to BoA, different priorities can be assigned to those

embodiments with a mass of 0.04 grs (entitled to priority) and to those embodiments having different mass (not entitled to priority, but no novelty destroying disclosure). Rogue decision?

T 680/08: Method of compounding a multimodal polyethylene composition in a compounding device, wherein ()

Claim: total drive specific energy (SEC) applied on the polyethylene

composition is from 0.330 to 0.415 kWh/kg,

Priority document: lower value at 0.325 No particular technical effect can be assigned to difference of 0.005 Priority claim not valid, priority document destroys novelty Auxiliary Request: disclaimer, excluding the value 0.330 kWh/kg Auxiliary Request entitled to priority
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EPO BoA Interpretation of G 2/98

T 1222/11: relates to a liquid composition comprising
The present Board is the opinion as explained below that the condition

provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters should be given, when read in its proper context, a different meaning than that attributed to it by the respective Boards in the above mentioned decisions T 1877/08, T 476/09, T 1443/05 and T 1127/00. As a preliminary remark, this condition cannot be meant to set out the manner in which the subject-matter of the OR-claim must be defined. Furthermore, it has to be borne in mind that the assessment required can be achieved only by a comparison of the claimed subject-matter of that OR-claim with the disclosure of the multiple priority documents. Therefore, the words gives rise to the claiming of a limited number of clearly defined alternative subject-matters refer to the ability to conceptually identify by said comparison a limited number of clearly defined alternative subjectmatters to which the multiple rights of priority claimed can be attributed or not.

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EPO BoA Interpretation of G 2/98

T 1222/11
It is therefore concluded that in so far as a subject-matter disclosed in a

priority document and encompassed by an OR-claim of a European application (i.e. a claim of a European application which compared to the disclosure of the subject-matter in the priority document has been broadened) is concerned, the decision on whether priority can be acknowledged for this subject-matter, i.e. for this embodiment covered by the OR-claim, is independent of whether said subject-matter or embodiment disclosed in the priority document is identified in the ORclaim of the European application as a separate alternative embodiment (or in the application as a whole). Basic conclusion appears to be: a broader generic formula can have partial priority because the clearly defined alternatives are the narrow formula and the rest of the scope of the claim

Conflicting Case Law Relatively good position whenever splitting of a claim across the scope

of a generic expression is straightforward or least a solid rationale is available

If alternative subject-matters are explicitly defined in the claims even better

Possible referral to Enlarged Board of Appeal in future?

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Beware when:
A PCT/EP application claiming priority has been broadened with respect to priority application.

Or if invention has shifted in PCT/EP application claiming priority

But in some cases even if PCT/EP application is more narrow

Priority: range 0.5 13.9 Later filed EP: range 0.6 13.8 EP does not have right to priority
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And does not have novelty with respect to priority application

Solutions self-collision:
No priority founding EP application, file elsewhere If priority founding EP application, withdraw priority document prior to publication
Be careful with divisionals from any of these applications Do not include conflicting subject-matter in subsequent divisional

applications
This may mean filing various divisional applications at the same time

for different subject-matter to be pursued.

Of course depends on the scope of protection obtained or obtainable

in parent application

When drafting subsequent PCT/EP application:

Disclaim specific embodiments in priority document Include claims specifically for new embodiments independently Try to create support for limited number of clearly-defined

alternatives, by identifying these alternatives explicitly in description and/or claims

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Solutions self-collision:
When filing first US (provisional) application:
Be sure to provide good basis for claims in later PCT application EPO is very strict. Novelty-type test. Consider including multiple dependencies in claims

After having committed the mistake:

Disclaim, wherever possible, conflictive subject-matter Withdraw priority claim? (has to be before publication of the

application)
Undisclosed disclaimer rules of G1/03 and G2/10
Should not disclaim more than necessary Only for re-establishing novelty Has to be clear The resulting subject-matter must have basis in the application as filed

After grant at EPO, consider central limitation procedure, Art. 105a

EPC.
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In opposition / litigation in Europe:

Check whether priority rights were correctly assigned or not Check whether same subject-matter is claimed Think about using toxic divisional applications

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Thank you
Thank you for your attention. E-mail further questions to: mderooij@zbm-patents.eu

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