Recent EPO Decisions: Part 1

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1 Oliver Rutt RSC Law Group IP Case Law Seminar 9 November 2017

2 Decisions G1/15 Partial Priority T260/14 Partial Priority T1543/12 Sufficiency T2602/12 Admissibility T2502/13 Article 123(2) EPC / Disclaimers

3 G1/15 - Introduction Partial priorities Referral from T557/13 Patent revoked in opposition proceedings Patent obtained from divisional application claiming a genus of the disclosure of the priority application Priority claim of Patent invalid / priority claim of parent valid. Therefore parent constituted prior art under Article 54(3) EPC

4 G1/15 - Introduction Claim 1 of the Patent: The use of a cold flow improver, wherein the cold flow improver is an oil-soluble polar nitrogen compound carrying two or more substituents of the formula NR(13)R(14), where R(13) and R(14) each represent a hydrocarbyl group containing 8 to 40 carbon atoms provided that R(13) and R(14) may be the same or different, one or more of which substituents may be in the form of a cation derived therefrom, to enhance the lubricity of a fuel oil composition having a sulphur content of at most 0.05% by weight, wherein from to 1% by weight of the cold flow improver based on the weight of the fuel is present.

5 G1/15 - Introduction Example 1 of the priority document: A polar nitrogen compound, an N,N-dialkylammonium salt of 2- N N dialkylamidobenzoate, the product of reacting one mole of phthalic anhydride and two moles of di(hydrogenated tallow) amine.

6 G1/15 - Background Partial Priority 1 st EP Filing (priority date) : R-Cl 2 nd EP Filing (filing date) : R-X, where X = F, Cl, Br Subject Matter R-F R-Cl R-Br Effective Priority Date Filing Date Priority Date Filing Date

7 G1/15 - Background Partial Priority Article 88(2) EPC: Multiple priorities may be claimed in respect of a European patent applications Where appropriate, multiple priorities may be claimed for any one claim

8 G1/15 - Background Partial Priority Article 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 partial priority domains of subject-matter having different dates

9 G1/15 - Background G2/98 G2/98: (Point 6.7 of the reasons) The use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2) EPC, second sentence, is perfectly acceptable under Article 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters. Divergent case law!

10 G1/15 - Background Splitting of claim scope no problem when different domains have been expressly individualised as alternatives by the wording of the claim and these alternatives also correspond exactly to elements that either are or are not disclosed in the priority application. What about when the possible alternative subject-matters forming partial priority domains are not made explicit in the claim, but are identifiable within the scope of a generic claim term only conceptually, by reference to a narrower disclosure found in the priority application and merely encompassed within the scope of a broader generic claim term employed in the later filing that claims priority?

11 G1/15 - Background 1 st EP Filing (priority date) : R-Cl 2 nd EP Filing (filing date) : R-X, where X = F, Cl, Br Priority date of X = Cl is date of first filing Priority date of X = F, Br is date of second filing 1 st EP Filing (priority date) : R-Cl 2 nd EP Filing (filing date) : R-X, where X = halogen Is R = Cl entitled to priority date of first filing?

12 G1/15 - Background Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic OR -claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document?

13 G1/15 - Background Generic OR -claim Travaux préparatoires to the EPC 1973 FICPI Memorandum C (M/48/I) AND -claim Type A+B (PD1: A, PD2: A+B, patent claim: A+B)) Claim too narrow to be supported by the disclosure of the first priority document OR -claim Type A or B (PD1: A, PD2: A or B, patent claims: A or B) Claim too broad to be supported by the disclosure of the first priority document

14 G1/15 - Decision 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

15 G1/15 - Reasons Article 87(1) EPC: Any person who has duly filed, in or for (a) any State party to the Paris Convention for the Protection of the Industrial Property or (b) any Member of the World Trade Organisation, an application for a patent 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. Article 4A(1) Paris Convention: Any person who has duly filed an application for a patent in one of the countries of the Union, shall enjoy, for the purpose of the filing in the other countries, a right of priority during the periods hereinafter fixed.

16 G1/15 - Reasons Article 4B Paris Convention: Any subsequent filing shall not be invalidated by reason of any acts accomplished in the interval.

17 G1/15 - Reasons Reason 4.4 of the Decision: It can thus be concluded both from the wording of the law and from the logic of the underlying concept that the right of priority as established in the EPC (and the Paris Convention) operates to exclude the collision of subject-matter disclosed during the priority period with identical subject-matter disclosed in a priority document, in so far as priority has been validly claimed.

18 G1/15 - Teaching Two-step test for assessing whether subject-matter in a generic OR -claim may benefit from partial priority: 1. Determine the subject-matter disclosed in the priority document that is relevant in respect of the prior art disclosed in the priority interval; and 2. Examine whether this subject-matter is encompassed by the claim of the application or patent claiming said priority.

19 G1/15- Teaching 1 st EP Filing (date: X): R-Cl 2 nd EP Filing (date: Y): R-X, where X = halogen Conceptually split into 2 parts: X = Cl, X = halogen other than Cl Priority date R-Cl: X, Priority date R-F, R-Br, R-I, R-At: Y 3 rd EP Filing (date: Z): R-X, where X = halogen other than Cl Priority date R-F, R-Br, R-I, R-At: Y

20 G1/15 - Conclusions No more poisonous priorities / poisonous divisionals Reduced burden when filing subsequent applications (but take care regarding other jurisdictions!)

21 T260/14 Application of G1/15! Claim 1: A dental impression material comprising a base paste and a catalyst paste, wherein the base paste comprises and 0.1 to 15% by weight of a fluidity improver the fluidity improver having a molecular weight Mw in the range of 100 to Working example of priority document: dental impression material comprising fluidity improver Breox PAG 50 A 20 (Mw:500).

22 T260/14 Two-step test from G1/15: 1. Determine the subject-matter disclosed in the priority document that is relevant in respect of the prior art disclosed in the priority interval (working example containing Breox PAG 50 A 20 ); and 2. Examine whether this subject-matter is encompassed by the claim of the applicant or patent claiming said priority (Yes!).

23 T260/14 G1/15 (Point 11.8 of Reasons): a decision on whether partial priority can be acknowledged for subject-matter disclosed in a priority document and encompassed by an OR -claim cannot depend on whether this subject-matter was expressly identified as a separate alternative in the claim.

24 T260/14 Unsuccessful counter-arguments by the Appellant-Opponent: 1. G1/15 does not apply; and 2. Principle of equal treatment of applicant and third parties potentially breached.

25 T260/14 Counter-argument 1 In G1/15, the referral concerned the situation where the priority document disclosed only one or more embodiments. In the present case, the priority document discloses the entire subject-matter of the claim claiming priority, whereas the patent itself comprises a limitation of the more general disclosure. Mw of fluidity improver: in claim 1 of patent = in priority document =

26 T260/14 EPO Board of Appeal: this comparison, as well as the references to other distinguishing features between the patent in suit and [the priority document] concerns the question of whether priority can be acknowledged for the entire scope of claim 1 of the patent in suit. This is, however, not the issue which the Board needs to decide. The only relevant issue is whether partial priority can be acknowledged for the part of claim 1 which concerns the working example, i.e. that part of claim 1 against which the novelty attack was directed.

27 T260/14 Counter-argument 2 Would the patentee be in a better position than a third person who filed a selection invention within the priority interval, for example by claiming a sub-range of of molecular weight? For selection invention the claimed range must be sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range. Would the principle of equal treatment of applicants and third parties, as referred to in G2/98, (point 8.1 of the Reasons), still apply in future?

28 T260/14 EPO Board of Appeal: The partial priority claimed by the appellant-opponent does not concern a range. The working example contains the fluidity improver Breox PAG 50 A 20 which has one specific molecular weight. Thus, even if one were to assess novelty, the criteria which the appellant-opponent cited with regard to the assessment of novelty of a selection invention would not apply. The appellant-opponent might have had the question in mind of what criteria would apply for the assessment of partial priority if the alternative subject-matter of a claim was a sub-range within the broader range of the claim in question. However, this is not at issue in the present case.

29 T1543/12 Sufficiency. Multiple ranges in a claim. Each range individually supported, but there may be combinations that are not.

30 T1543/12 Claim 1: A method for preparing a dry granulated product containing L-lysine and having the following composition: L-lysine content in solid matter: 40 to 85% by weight, equivalent ratio of anion/l-lysine 0.68 to 0.95, and moisture content: 5% by weight or less Not possible to produce lysine products having a lysine content of 85% and an equivalent ratio of more than 0.71!

31 T1543/12 Article 83 EPC: The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Guidelines F-III, 1: the application must contain, in addition to the examples, sufficient information to allow the person skilled in the art, using his common general knowledge, to perform the invention over the whole area claimed without undue burden and without needing inventive skill (see T 727/95). In this context, the "whole area claimed" is to be understood as substantially any embodiment falling within the ambit of a claim.

32 T1543/12 Example given by Opponent technically impossible product comprising 85% by weight of L-lysine can only comprise 15% by weight of an anion forming compound (hydrochloric or sulfuric acid). Depending on the molecular weight of the acid used in the process, the ratio of anion/l-lysine can reach only certain theoretical values within the claimed range. The skilled person knows that both the L-lysine content in the final product and the achievable ratio of anion/l-lysine are dependent on each other and cannot vary independently over the whole range of values claimed for each of these two parameters.

33 T1543/12 In order to be carried out over the whole range claimed, it is only necessary that each value within the claimed range can be achieved individually. It is, however, not a requirement of Article 83 EPC that each and every possible combination of all individual limiting values within the claimed range can be achieved.

34 T2602/12 Claim 1 as granted: A method for making an antimicrobial medical device, comprising the steps of: (a) forming a polymerizable dispersion according to a process selected from the group consisting of: (i) adding a (ii) adding a (iii) first obtaining (b) introducing an amount...

35 T2602/12 Article 12 of the Rules of Procedure of the Boards of Appeal: Appeal proceedings shall be based on (a) the notice of appeal and statement of grounds of appeal (1) Appeal proceedings shall be based on (a) the notice of appeal and statement of grounds of appeal (2) The statement of grounds of appeal and the reply shall contain a party's complete case (4) Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under (1) shall be taken into account by the Board

36 T2602/12 Opponent requested that Main Request not be admitted because: 1) previously withdrawn to prevent department of first instance from giving an adverse decision, 2) misleading to public

37 T2602/12 Reason of the decision: The withdrawal before the Opposition Division of a request directed to a method comprising process step (i) did not prevent the department of first instance from giving a reasoned decision on this subject-matter, since said method was a part of the subject-matter of granted claim 1 on which the Opposition Division did indeed take a decision. However, inventive step of a method comprising process step (i) had not been challenged by the Opponent before the Opposition Division. It is thus not plausible that such a request was withdrawn to avoid an adverse decision on it.

38 T2602/12 Reason of the decision: With regard to the Respondent's argument that the general public was misled by the behaviour of the Appellant in withdrawing said request before the Opposition Division, the Board draws attention to the fact that there are many reasons why a patent proprietor may file and withdraw requests. However, withdrawal of a request does not constitute abandonment of its subject-matter, such that the public should not interpret withdrawal of a request before the first instance in this manner.

39 T2602/12 Opponent s inventive step arguments: Raised for first time during hearing Not admitted into proceedings

40 T2602/12 - Conclusion Parties must include their complete case in their written grounds of appeal (Article 12 RPBA) Withdrawal of requests during first instance not necessarily fatal

41 T2502/13 Main Request anticipated by A8 (Article 54(3) EPC) 1 st Auxiliary Request: A laminated glazing for use as an automotive window comprising two panes of glazing material joined together by at least three (first, second and third) plies of interlayer material further wherein the third ply of interlayer material comprises a plasticizer.

42 T2502/13 Guidelines H-V, 4.1: Limiting the scope of a claim by using a disclaimer to exclude a technical feature not disclosed in the application as filed may be allowable under Article 123(2) EPC in the following cases (see G1/04 and G2/03, and F-IV, 4.20): (i) restoring novelty over a disclosure under Art. 54(3)

43 T2502/13 Reason 4.4 of the Decision: the board notes that the additional feature is a positive feature, which teaches which subject-matter has to be included in the scope of the claims. It is not drafted as a disclaimer to exclude any specific embodiment of A8. Decision G1/03 therefore does not apply. Reason 4.5 of the Decision: the first auxiliary Request is thus not allowable, because the subject-matter of claim 1 extends beyond the content of the application as filed, contrary to Article 123(2) EPC.

44 Thank you