Demystifying Self-collision at the EPO

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1 Demystifying Self-collision at the EPO December 2015 Much has been said in the last couple of years about self-collision of European patent applications especially concerning toxic divisional filings invalidating other family members. This article attempts to demystify the issues surrounding the complex legal situation. In an effort to clarify the situation, questions of partial priority and self-collision have recently been referred to the EPO s Enlarged board of Appeal in case G1/15. Please see our article titled EPO Enlarged Board of Appeal to tackle divisional poisoning for more details. The Background It is quite possible for two European patent applications filed on the same day by the same applicant to deprive each other of novelty. In particular, lack of novelty can occur if a claim in one of the two applications is changed from what was in a priority application and so loses its entitlement to the priority date. That situation is not new. Ever since the EPC was enacted 40 years ago, the prospect for an applicant s co-pending cases to self-collide has existed, firstly due to the prior art status of earlier filed but later published European applications and secondly due to the lack of special treatment for applications in common ownership. However, as the EPO s interpretation of entitlement to priority has evolved over the years the trap of self-collision has captured more and more victims. Recent cases dealing with whether a divisional filing may deprive the parent application of novelty (the so called toxic divisional scenario) has resulted in a lot of discussion about this issue. Following a recent referral to the EPO s the Enlarged Board of Appeal, it is hoped that the law in this regard will be clarified in the next few months. This article seeks to explain the issues and what is at stake. Co-Pending Applications in Europe Under Article 54(3) EPC, subject matter contained in a European patent application that was filed before, but not yet published by, the date on which a subsequent application was filed, is part of the state of the art for the assessment of novelty of that subsequent application. The whole contents of an earlier European filing is part of the state of the art, not just overlapping claims. So, if application EP that discloses apple is filed in 2014 and EP1 that claims fruit is filed in 2015, once EP publishes in 2016, the disclosure of apple is part of the state of the art with an effective date of 2014, and it destroys the novelty of the claim to fruit in EP1, regardless of the scope of the claims of EP or its later fate.

2 2014: EP filed 2015: EP1 filed 2016: EP published = prior art Art. 54(3) EPC Self-Collision of Family Members Take the situation where a provisional application (P) is filed only containing a disclosure of orange. A later European application (EP1) is filed with a claim directed to fruit and another (EP2) filed with claims directed to foodstuff containing citric acid, both claiming priority from P and both reciting orange as an example. At first glance, one might assume that there can t possibly be an issue with such a filing strategy - both cases EP1 and EP2 claim priority from P so the disclosure of orange in one can t possibly be relevant to novelty of orange in the other. However, because the entitlement to priority of each claim is assessed on the basis of whether the claimed subject matter is disclosed in the provisional application, there is scope of self-collision in this scenario. P EP1 EP2 When considering the novelty of the claim to fruit in EP1, the step of establishing the priority date for EP1 and the step of establishing the relevant date for orange in EP2 are carried out independently. As the general term Fruit is not disclosed in P, claim 1 of EP1 as a whole is not entitled to priority. However, as orange is disclosed in P, the subject matter of orange in EP2 is entitled to priority and so becomes part of the state of the art under Art. 54(3) EPC. Therefore, claim 1 of EP1 as a whole lacks novelty. However, if claim 1 of EP1 be split into parts that are entitled to different priority dates - one part being entitled to the priority date of P, which encompasses orange, and another part which does not overlap with the disclosure of P; then EP2 is not novelty destroying. Thus, the criteria used to determine whether a claim can be afforded different priority dates is of vital importance. Entitlement to Partial Priority Enlarged Board decision G 2/98 is the EPO s most significant decision concerning entitlement to a priority date. It is the G2/98 decision that solidified the EPO s position that, to be entitled to a priority date, the subject matter of a claim (not just the inventive concept) needs to be

3 clearly and unambiguously disclosed in the priority document. As something of an aside, the decision included a single paragraph concerning the issue of whether a claim could have two different priority dates, i.e. partial priority dates. The decision said that a claim can only be afforded more than one priority date where it is conceptually an OR claim covering a limited number of clearly defined alternatives some of which are disclosed in the priority document. A claim directed to orange, lemon or lime is clearly an OR claim that is divisible into a part that is entitled to priority ( orange ) and a clearly defined alternative part ( lemon and lime ) which is not entitled to priority. However, the Boards of Appeal have differed in their interpretation when the claim in question encompasses, without spelling them out, alternative embodiments having all the features of the claim. For example, are claims directed to the generic terms fruit and foodstuffs containing citric acid OR claims that can they be divided into orange and the remaining claim scope? The EPO may consider that the generic term fruit encompasses a collection of different and discrete fruit types from which orange and all fruits other than orange can be identified as alternatives. = + - On the other hand, the EPO may consider that the subject matter of foodstuffs containing citric acid is not conceptually an OR claim covering a number of clearly identifiable alternatives from which foodstuffs containing citric acid, other than orange can be divided. Thus, the claim of EP2 is not entitled to partial priority and so lacks novelty over the disclosure of orange in EP Drafting to Avoid Self-Collision While we eagerly await the outcome of the G 1/15 referral to the EPO s Enlarged Board of Appeal in the hope that it will provide a clear test for determining the entitlement of a claim to multiple priority dates, how should we draft patent applications in the meantime? Ideally all first filings would disclose all aspects of the invention in a manner that fully entitles all subsequent claims to the first priority date. However, in the real world there are many reasons why the scope of a claim is changed during the priority year, such that it becomes necessary to rely on different parts of an eventual claim being entitled to different priority dates. Some suggestions for heading off possible self-collision issues at the foreign filing stage (i.e. when filing a PCT or European application) are:

4 1. Spelling out the alternatives. If the possible alternatives are clearly spelt out in the specification it is easier for an EPO Examiner to point to how the claim may be divided. For example, EP1 could include list the desirable alternatives: Typically the fruit is selected from lemon, lime and orange. 2. Disclaimer. The subject matter of the priority document could be recited both in the positive and the negative. For example, EP2 could set out that: In one aspect the foodstuff containing citric acid is orange; in another, the foodstuff containing citric acid is not orange. 3. Insertion of a trivial feature. Can a trivial, non-limiting feature which provides bare novelty over the earlier priority filings be inserted? For example, could both EP1 and EP2 disclosure that the fruit and foodstuff is preferably packaged. The orange disclosed in P is not necessarily packaged. While no part of a claim to a packaged fruit or foodstuff is entitled to priority, claims so limited are novel over the mere disclosure of orange. 4. Don t let priority applications publish. Applicants that file priority applications in Europe should be wary of allowing them to proceed to publication if they include subject matter that may destroy the novelty of a claim in a more valuable later filing. 5. Only claim priority to complete earlier filings. If an earlier filing does not include sufficient information to support a claim, or at least a clearly defined alternative in a claim, it can be preferable not to claim priority from that earlier filing in Europe. Further reading Decision T557/13 of the EPO Board of Appeal referring the G 1/15 questions to the Enlarged Board of Appeal provides a thorough explanation of this issue, and how divergent case law has developed concerning the entitlement of claims to partial priority dates. The Notice from the European Patent Office dated 2 October 2015 (published 2 November 2015) concerning the staying of proceedings due to referral G 1/15 also sets out the issues very succinctly. If you have any questions regarding the issues surrounding self-collision at the EPO, or if you would like to discuss how it may influence filing and/or opposition strategy, please do not hesitate to get in touch with your usual Abel & Imray contact, or send an to ai@patentable.co.uk.

5 Matthew Fletcher is a Partner at Abel & Imray and a member of the Firm s Chem-Bio team. Matthew.fletcher@patentable.co.uk But don Patents? 20 Red Lion Street London WC1R 4PQ T: +44 (0) F: +44 (0) Assembly Square Britannia Quay Cardiff CF10 4PL T: +44 (0) F: +44 (0) Westpoint Building James Street West Bath BA1 2DA T: +44 (0) F: +44 (0)