Reconsideration of G3/93 “Priority Interval” from the Perspective of G1/15 “Partial Priority”

K. Shibata (JP)

Introduction

In the past, publication of an application, used as the basis of a priority claim was believed to be a non-prejudicial disclosure under Section 6(1) of UK Patents Act 1977.[1] In Germany the same standard used to be applicable.[2] Section 6(1) of UK Patents Act 1977 is aligned with Article 4B of the Paris Convention. Furthermore, the EPO Technical Board of Appeal in T301/87 affirmed the same principle, despite the fact that the EPC contains no corresponding provision of Article 4B of the Paris Convention. However, the EPO Enlarged Board of Appeal in G3/93 subsequently specifically overruled that decision. The EPO Enlarged Board of Appeal in G3/93 held that "a document published during the priority interval, the technical contents of which correspond to that of the priority document, constitutes prior art citable under Article 54(2) EPC against a European patent application claiming that priority, to the extent such priority is not validly claimed". There is no doubt that this judicial precedent indicated in G3/93 is applicable to "AND"-claim. However can this judicial precedent be also applicable to "OR"-claim? This question has arisen because G1/15 made the condition of the recognition of partial priority for the generic "OR" claim clear for the first time.

The author believes that the scope of the referral in G3/93 was the matter related only to a full priority. This article aims to explore differences between full priority and partial priority with the view to reconsider G3/93 from the perspective of G1/15. Incidentally, all opinions expressed in this article are the personal opinions of the author, and do not represent the opinions of the organization to which he belongs.

1. The implication of G1/15 Decision

The EPO Enlarged Board of Appeal in G1/15 held as follows:

"Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) 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".

As seen from arguments between appellant and appellee, and amicus briefs, there were several confrontations in the background. First of all, should the "Travaux Préparatoires" prevail over case law or not? Secondly, should the same standards be used for added subject-matter and priority or not? Thirdly, should the applicant and third parties be treated equally or not?

As to the first point, the Enlarged Board of Appeal made it clear that the FICPI Memorandum (herein-after "the Memorandum") allows for a confirmation of the present interpretation (point 5.2 of the reasons). As to the second point, the Enlarged Board of Appeal stated that determining the subject-matter disclosed in the priority document be examined in accordance with the "gold standard" disclosure test laid down in the conclusion of G 2/98 (point 6.2 of the reasons), but pointed out that accepting multiple and partial priorities is not the same as allowing amended claims in such a manner that, after amendment, only one priority is claimed for each individual claim as indicated in Memorandum (point 5.2.1 of the reasons). As to the third point, the Enlarged Board of Appeal pointed out that accepting multiple and partial priorities does not create uncertainty for third parties (point 6.6 of the reasons).

With regard to the third point, some amicus briefs argued that an unwarranted advantage should not be given to the applicant or patentee that could diminish certainty for third parties. The Enlarged Board of Appeal pointed out that priority is a right (point 4.1 of the reasons), and held (point 4.2 of the reasons) that:

"As a matter of principle, 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".

The author thinks that the position taken by the Enlarged Board of Appeal is very significant.

2. The effect of G1/15 decision and arising question

The G1/15 decision has resolved the problem of poisonous priority and divisional applications. However the effect of the decision is directed not only to such resolution but also to overcoming the intervening act by third parties. The priority, to the extent that it relates to the same subject-matter as the first filing, provides a sort of barrier designed to prevent third parties from interfering with the applicant's right to obtain protection for the claimed subject-matter which was first disclosed in the previous application. Here one question arises. There is no question that partial priority is valid for novelty attacks. How about for inventive step attacks?

As already mentioned, in the UK the publication of an application used as the basis of a priority claim was a non-prejudicial disclosure. Hence, partial priority was valid not only for novelty attacks but also for inventive step attacks. Also in Germany it appeared that the same standard used to be applicable according to the "umbrella"-theory. After the G3/93 Opinion was rendered, however, the UK Patents Court followed the opinion in 1995[3], and the Bundesgerichtshof followed the opinion in 2001[4].

G1/15 appears to assume that the Memorandum is valid as a legislative intent of Article 88 (2) EPC and also as the confirmation of the present EPC interpretation. According to the Memorandum, an "AND"-claim cannot enjoy a partial priority. On the other hand, the scope of the referral in G3/93 was "AND"-claim[5], and the Bundesgerichtshof decided about "AND"-claim. Hence, these decisions are aligned with the Memorandum. However the UK Patents Court decided about the situation which appeared to concern "OR"-claim. There is some possibility that the decision by the UK Patents Court is not compatible with the G3/93 Opinion and the G1/15 decision.

3. Analysis of Beloit v Valmet

In Beloit v Valmet the Patents Court stated as follows:

"Claim 1 of the 899 patent was not entitled to priority. The Japanese application disclosed only two suction rolls or (solely from one cryptic sentence) a first suction roll and a second non-suction but circumferentially grooved roll. This information was not adequate support for claim 1, which encompassed cases where no suction rolls were used for transfer between the dryer sections, where the first roll was not a suction roll but the second was, and where the non-suction roll did not have circumferential grooves".

This case seems to concern a generic "OR"-claim situation. However, the decision does not mention partial priorities at all. The scope of the decision appears to be the matter of full priority. By citing G3/93, the court stated that:

"Section 6(1) of the Patents Act 1977 did not carve out from the state of the art matter made available to the public in the priority interval just because that matter was in the priority document".

In this regard G3/93 Opinion held that:

"This also applies if a claim to priority is invalid due to the fact that the priority document, and the subsequent European application, do not concern the same invention because the European application claims subject-matter not disclosed in the priority document".

The UK Patent Courts appeared to have construed literarily and strictly, the above-mentioned provision ruled by G3/93 Opinion.

4. Analysis of G3/93 Opinion

We must explore the contents of G3/93 Opinion. The Enlarged Board of Appeal in G3/93 ruled as follows:

"Article 4, Section A(1), Paris Convention, makes no mention of the subject-matter of the  subsequent application. It is generally held that the subsequent filing must concern the same subject-matter as the first filing on which the right of priority is based [cf. R. Wieczorek, Die Unionspriorität im Patentrecht, Köln, Berlin, Bonn, München 1975, p. 149; G.H.C. Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property as Revised at Stockholm in 1967, Geneva 1968, at Article 4, Section A(1), sub (i)].

Actually the same understanding was expressed by these books. Bodenhausen instructs "The subsequent filing must concern the same subject as the first filing on which the right of priority is based. This means that in the case of patents, utility models or inventor's certificates it must concern the same invention or innovation". Also Wieczorek instructs in the same manner at page 149 in his book.

However it is possible to find another interesting passage in Wieczorek as follows:

"Enthält die Nachanmeldung gegenüber der Erstanmeldung einen erfinderischen Überschuß, so liegt Erfindungsidentität dennoch vor, wenn dieser Überschuß für jeden Fachmann naheliegend war, also keine eigene Erfindungshöhe besitzt".[6]

The Enlarged Board of Appeal did not appear to endorse this passage. Actually later they affirmed it by adopting the "gold standard" disclosure test in G2/98.

The Enlarged Board of Appeal in G3/93 appears to have assumed a similar "gold standard" disclosure test. The G3/93 opinion, however, does not mention "OR"-claim nor partial priority at all. Accordingly, the scope of the referral in G3/93 appears to be the matter of full priority. Here it is possible to find one clue to solve this question. At the end of the G3/93 opinion, the Enlarged Board of Appeal concluded that a decision of the same sort was also made in the United States, by referring to Gosteli.[7]

Gosteli, Re in 1989, even partial priority was not recognized. The Court of Appeals for the Federal Circuit stated, as the reason therefor, that a priority document must support the entire claim of a subsequent US application prescribed in 35 U.S.C. Section 119. The Gosteli case concerned a Markush type claim, namely "OR"-type claim. The United States does not allow multiple priorities for a single claim even if it is a Markush type claim. From the perspective of the Gosteli case, the scope of the G3/93 opinion seems to be only the matter of full priority. Hence, the Enlarged Board of Appeal made no mention on partial priority at all.

If so, applying strictly and literarily the provision of G3/93 to the case of Beloit v Valmet seems not to be proper. At least, the construction of the provision by G3/93 should be modified in accordance with the decision of G1/15 which concerns a generic "OR"-claim situation.

5. Legislative intent concerning "OR"-claim expressed by the Memorandum

According to G1/15, the Memorandum indicates the advantages of allowing multiple and partial priorities, including the avoidance of claim proliferation and possible disadvantages in national post-grant procedures (point 5.2.1).

The Memorandum shows an example case that the principal claim of the first priority document is directed to a composition including chlorine in some form and capacity and that the description of the first priority document, including the example, does not mention any alternatives for chlorine. The example case concerns that as a consequence of further experiments the applicant has found that chlorine may be replaced by bromine, iodine or fluorine, without substantial change of the technical effect, and then he files a second priority application claiming the use of bromine, iodine or fluorine as a substitute for chlorine. The second priority application contains examples of the use of all these elements.

With regard to the avoidance of claim proliferation, the Memorandum points out that if the applicant is not permitted to claim multiple priorities for one and the same claim, he will be forced to draw up four sub-claims, each directed to one of the members of the halogen group. The Memorandum also points out that many European countries, however, shows that this type of sub-claims will not be allowed because these claims will be rejected as frivolous, as just being an exhaustive list of the halogens which any school boy can find in his elementary text book.

With regard to possible disadvantages in national post-grant procedures, the Memorandum stated as follows:

"Let us now examine what happens if the applicant lets himself be coerced into abandoning the sub-claims to chlorine, bromine, iodine and fluorine, thus maintaining only the halogen claim, and his European patent later comes before a national court in a situation where an alleged infringer is able to prove that there has been public use of the invention (maybe the patentee's own use) between the second priority date and the actual filing date of the European patent application. If, under the national law of the country concerned multiple priorities for one and the same claim are not allowed, the patent will be declared invalid, but if multiple priorities for one and the same claim are allowable, the patent will be declared valid. Similarly, if public use of the chlorine embodiment is proved to have taken place between the two priorities dates, the halogen claim will be declared invalid in a country of the first type, and valid in its entirety in a country of the second type. If public use of all four embodiments is proved to have taken place between the two priorities dates, the halogen claim will again be declared invalid in a country of the first type, while in a country of the second type, it will, in accordance with Art.138(2), be limited to the chlorine embodiment".

The Memorandum does not mention inventive step attacks expressly. However, the expression that "frivolous as just being an exhaustive list of the halogens which any school boy can find in his elementary text book" reminds the author that replacing chlorine with bromine, iodine or fluorine is obvious. If so, there is some possibility that the Memorandum intends that publication of the invention described in priority documents is a non-prejudicial disclosure, and this idea is aligned with section 6(1) of UK Patents Act 1977 and art.4B of the Paris Convention.[8]

Conclusion

If the Enlarged Board of Appeal admits that the Memorandum can be said to express the legislative intent underlying the second sentence of art. 88(2) EPC, the effect of partial priority should be construed to avoid inventive step attacks against entire generic "OR"-claim. In that case, discussion on unwarranted advantage of applicants or uncertainty for third parties may reignite.

Incidentally, with regard to discussion on the grace period, legal uncertainty is often mentioned. The patent system inherently has a waiting time from the date of disclosure of the invention to the date of publication of a patent application related to the disclosed invention. It means, during this waiting time, third parties cannot recognize whether they infringe the inventor's patent when he use the inventor's disclosed invention, whether a patent application regarding to disclosed invention is filed or not, and how the claim of the application is drafted. The grace period system prolongs such "waiting time". However the partial priority system does not prolong such "waiting time". The third parties, who recognize the intervening exploitation of the invention by the applicant, will know the contents of the subsequent application 18 months after the priority date. The situation of third parties is not affected whether the claim of the subsequent application is the same as originally filed or is broadened compared to the original claim because they have been unable to recognize such claim until the publication. The precedent of the G3/93 opinion should be applied only to an "AND"-claim situation. With regard to an "OR"-claim situation, the precedent should not be applied it, and the determination should be made as indicated in the FICPI Memorandum.

Inventing is difficult and cannot stop with the first filing. It is therefore very common for an invention to change, and be possibly broadened during the priority year. Is it appropriate to force inventors to keep their inventions secret even after the first filing? Is it consistent with one of the basic objects of the patent system, namely to promote a rapid spread of information and technology?

At the Washington Conference on the Revision of the Paris Convention, in 1911, multiple priorities were first proposed in order to avoid improvements of the original invention having to be prosecuted in applications for patents of addition.[9] On the other hand, the EPC did not adopt patents of addition, which was mentioned in the Convention on the Unification of Certain Points of Substantive Law on Patents for Invention signed on 27 November 1963 at Strasbourg, but rather an internal priority system. We must consider its meaning.

1. Ian Muir, Matthias Brandi-Dohrn, Stephan Gruber, European Patent Law: Law and Procedure Under the EPC and PCT, (Oxford University Press, 2002), pp.27-28.
2. Hakennagel, BPatG 22.3.1995; GRUR 1995, 667.
3. Beloit v Valmet [1995] R.P.C.705.
4. BGH, GRUR int. 2002, 146 - Luftverteiler.
5. The point referred by the President of the EPO was that "does a document published during the priority interval and whose technical contents correspond to that of the priority document constitute prior art citable under Article 54(2) against a European patent application where the claim to priority is not valid because said application comprises subject-matter not disclosed in the priority document?"
6. R. Wieczorek, Die Unionspriorität im Patentrecht, Köln, Berlin, Bonn, München 1975, p.156.
7. Gosteli, Re 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989). Concerning detailed analysis about the judgment, refer to Kazuo Shibata "Some Problems with the Current Practices Concerning the Priority System" (2010) E.I.P.R. Isuue 10, pp.520-529.
8. In Chartered Institute of Patent Attorneys "CIPA Guide to the Patents Act 1977 " 1^st Edition, Sweet & Maxwell, (1980), p.28, there is the following instruction: "S.6 is to the same intent as s. 52 of the 49 Act and protects an applicant against disclosure of the invention by the applicant in the interval between the priority and filing dates. s.6 is qualified by s.130(7) and has therefore been framed to have, as nearly as practicable, the same effects as the corresponding EPC Articles. In addition, the corresponding provisions of EPCa.54 (novelty), EPCa.88(2) (multiple priority), EPCa.88(3) and (4) (substantive priority) and EPCa.89 (effect of priority) have to be construed in such a way that Article 4B of the Paris Convention is satisfied, since the preamble of the EPC states that the EPC is a special agreement within the meaning of Paris Convention Article 19". On the other hand, in Chartered Institute of Patent Attorneys "CIPA Guide to the Patents Acts" 7^th Edition, Sweet & Maxwell, (2011), p.215, there is the following instruction: "As discussed in §6.04, the EPO Enlarged Board of Appeal has given a decision apparently contrary to the provisions of the section, even though that decision appears also to be contrary to the wording of the Paris Convention".
9. Kazuo Shibata, "The history of partial priority system of the Paris Convention", epi-Information, (2016) , Issue 2/16, p.63.