08th June, 2016
Partial and multiple priorities are particular aspects of priority which are enshrined in the Paris Convention (Article 4F). The European Patent Convention contains corresponding provisions in its Articles 88(2) and (3).
These two aspects of priority have been analysed and discussed for a long time of jurisdictions where priority issues may be critical – as this was the case in particular in “first-to-file” systems. In Europe, abundant case law has developed around various aspects of priority. In particular, G2/98 is considered as a landmark decision when it comes to the ‘same invention’-standard that must be applied for acknowledging priority.
Incidentally, even though partial and multiple priorities were not the focus of G2/98, this decision also contained considerations applicable to these aspects of priority, including in point 6.7 of the decision.
The development of case law at the EPO on partial and multiple priorities has also generated a very particular scheme, of so-called ‘poisonous’ priorities, and even ‘poisonous’ divisional applications. The second scheme (poisonous divisional application) is a particular case of the first scheme (poisonous priority). In both schemes, self-collision occurs between two European patent applications filed in the name of the same applicant.
It has been sometimes difficult for users of the patent system to understand, and accept, the scheme of poisonous divisional applications. This is all the more true for users outside of Europe. This scheme has thus generated significant concern, and sometimes confusion. At the EPO, diverging case law has developed since before various Boards of Appeal. In view of this situation, Board of Appeal 3.3.06 has referred to the Enlarged Board of Appeal five questions :
- 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?
- If the answer is yes, subject to certain conditions, is the provison “provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters” in point 6.7 of G 2/98 to be taken as the legal test for assessing entitlement to partial priority for a generic “OR”-claim?
- If the answer to question 2 is yes, how are the criteria “limited number” and “clearly defined alternative subject-matters” to be interpreted and applied?
- If the answer to question 2 is no, how is entitlement to partial priority to be assessed for a generic “OR”-claim?
- If an affirmative answer is given to question 1, may subject-matter disclosed in a parent or divisional application of a European patent application be cited as state of the art under Article 54(3) EPC against subject-matter disclosed in the priority document and encompassed as an alternative in a generic “OR”-claim of the said European patent application or of the patent granted thereon?
As parties were invited to file observations in case G1/15, FICPI has prepared and filed an amicus brief in this case.
FICPI believes that the answer to question 1 should be ‘no’, and therefore this brief addresses this question only.
FICPI brief reminds that partial priority is governed by Article 88(3) EPC, and multiple priorities are governed by Article 88(2) EPC. Partial priority can actually be seen as a particular case of multiple priorities, with two or more possible effective dates, one or more being the date of filing of the priority document(s), the final one being the filing date of the subsequent European patent application. Article 88(2) EPC contains a second sentence which makes it clear that multiple priorities (different effective dates) may apply within “any one claim”.
These provisions were not amended by EPC 2000, and have been in place since 1973. They establish in a clear and explicit manner that multiple priorities may be claimed for a single claim. They also clearly establish that the elements which are included in the application(s) whose priority is claimed are covered by the right of priority. No further condition is contained in the EPC.
Thus, unless a relevant legal authority or provision establishes otherwise, FICPI highlights that there is no reason to restrict the assessment of partial and multiple priorities.
FICPI brief also comments on G2/98. This decision has sometimes been interpreted as containing in its point 6.7 a provision amounting to a “test” for acknowledging partial and multiple priorities. In its brief, FICPI however reminds that the considerations of G 2/98 which relate to partial and multiple priorities do not attempt to define how such priorities should be assessed; they are directed towards ensuring that partial and multiple priorities do not raise inconsistencies with the interpretation of the “same invention” that will eventually be established by G 2/98.
FICPI brief reminds the fundamental role of a FICPI Memorandum from 1973 (Memorandum M 48/I, Section C), which formulates a clear principle: it is possible to claim multiple priorities for any claim directed at alternatives (be it in the form of a claim using an explicit ‘or’, or a claim using a generic term or otherwise). No further condition or test is mentioned or even contemplated.
This memorandum is explicitely recognized (in particular by the landmark decision G2/98) as expressing the legislative intent underlying Article 88(2) EPC, second sentence. This provision of Article 88 EPC is the key for answering the first question referred to the Enlarged Board of Appeal in G1/15. In view of this, FICPI considers that the answer to this question should be “no”, and the other questions referred to the Enlarged Board of Appeal need not to be answered.