OJ EPO SE 2/2015, p117 - IV. PRIORITY

DE Germany

Federal Court of Justice of 14 August 2012 (X ZR 3/10) – Non-UV-sensitive printing plate

Keyword: priority – sufficient disclosure – inadmissible extension

This decision primarily concerned the question whether the novelty of the claim in the patent at issue had been destroyed by an application (D1) published after that patent's filing date and, in particular, whether D1 could validly claim the priority of two UK patent applications (D1.1 and D1.2).

The relevant feature (lack of photosensitivity to ultraviolet light) had not been expressly mentioned in the priority documents, but the Federal Patent Court took the view that the skilled person would nevertheless take it as read. The Federal Court of Justice considered this unjustified as there were no grounds for finding even implicit disclosure.

If D1.1 or D1.2 had been prior art relevant for assessing the patent's novelty, there would have been a strong case for finding that a method having the relevant feature (and otherwise corresponding to the invention) was known. However, D1.1 and D1.2 themselves were not under consideration as prior art and were relevant only in deciding whether D1 could validly claim their priority. This required not only that the feature be clearly disclosed in the application documents as a whole but also that it could be derived from D1.1 or D1.2 as forming part of the invention. These conditions were not met.

According to the Court's established case law, the skilled person has to be able to derive the claimed technical teaching – "directly and unambiguously" – from the original documents as a possible embodiment of the invention. Where an element of the teaching in a citation (here: D1) was characterised by a feature enabling the skilled person to select embodiments suitable for achieving the desired effect (here: lack of photosensitivity to ultraviolet light), but which was not clearly disclosed in the priority document (here: D1.1, D1.2), there is a lack of disclosure in the subsequent application if that property, even though, from an objective point of view, it was also a feature of an embodiment disclosed in the priority document, was at least not readily apparent to the skilled person. As an aside, the Court observed that this reasoning also applied to the ground of revocation of subject-matter extending beyond the content of the application (inadmissible extension: cf. Federal Court of Justice of 17 July 2012 – Polymer foam).

The Court also observed that, to avoid unreasonably restricting applicants in drawing on disclosure, it had allowed generalisations of originally disclosed embodiments. However, such generalisations are not considered admissible where the more general form is characterised by a feature not actually mentioned or not readily apparent to the skilled person. No other test can be applied in the assessment of priority. It is therefore not sufficient by itself that this feature becomes apparent when a disclosed embodiment is reproduced.

The relevant conditions were not met in this case. The feature in question was not mentioned in or readily apparent from D1.1 or D1.2. Consequently, the reference in D1 to that feature, and so to a distinguishing criterion for selecting compositions suitable for achieving the effect of the invention, which was not disclosed, let alone mentioned, in the priority documents as forming part of the invention, could not serve as a basis for establishing priority.

DE Germany

Federal Court of Justice of 11 February 2014 (X ZR 107/12) – Communication channel

Keyword: priority – disclosure

Under Art. 87(1) EPC, an applicant for a European patent can invoke a right of priority based on a previous application if both applications concern the same invention. Priority can be claimed if the skilled person would understand the technical instructions in the previous application, illustrated by an embodiment or otherwise described, to be a particular form of the more general technical teaching disclosed in the subsequent application, and could already derive that teaching, as disclosed in the general form in the subsequent application, from the previous application as forming part of the invention claimed there.

According to the Federal Court of Justice's case law, this requirement is met if the combination of features claimed in the subsequent application is disclosed in the previous application, taken as a whole, as forming part of the invention claimed there.

Whether disclosure is identical must be assessed in accordance with the same principles as apply to the examination of novelty (Federal Court of Justice of 14 October 2003 – Electric functional unit). According to the Court's settled case law, this means that the skilled person must be able to derive the claimed technical teaching "directly and unambiguously" from the previous application documents as a possible embodiment of the invention. It must therefore be investigated what the skilled person would derive from the previously published document as the content of their general teaching. This must be established on the basis of the skilled person's understanding when the application claiming priority was filed.

In establishing what is disclosed to the skilled person as the invention and what as an embodiment of the invention, it is essential not to unreasonably restrict the applicant in drawing on the disclosure in the previous application. Therefore, even generalisations of previously disclosed embodiments are admissible. Accordingly, a "broadly" worded claim will not result in any inadmissible extension if the application describes an embodiment of the invention which the skilled person can identify as a particular form of the more general technical teaching in the claim, and if the skilled person can already derive that teaching, in the same general form as is claimed, from the previous application – be it from one of its claims or the overall context – as forming part of the invention (Federal Court of Justice of 17 July 2012 – Polymer foam). Such generalisations have, above all, been permitted where only one or a few of several embodiment features, which are, both in combination and individually, conducive to achieving the inventive result, are included in the claim (settled case law since Federal Court of Justice of 23 January 1990 – Splicing chamber; see also Polymer foam; and Federal Court of Justice of 14 August 2012 – Non-UV-sensitive printing plate). Similar criteria apply in assessing whether the subject-matter of the invention is identically disclosed in the priority document.

FR France

Court of Cassation of 31 January 2012 [11-10924] – Go Sport v Time Sport International

Keyword: priority – concept of the "same invention"

As the proprietor of European patent 0 682 885, granted on 25 August 1999 with the priority of French patent 9 406 014 filed on 10 May 1994, Time Sport International (TSI) sued the Go Sportgroup (GS) for infringement. The patent was for a device to keep cycle helmets in place on the wearer's head.

GS challenged the Bordeaux Court of Appeal's ruling that European patent 0 682 885 was valid. It argued that it did not cover the same invention as the (French) patent whose priority was claimed, and so was not entitled to that priority. GS maintained in particular that TSI had been obliged to make substantial changes before the EPO board of appeal decided to maintain its patent in amended form. According to GS, the Court of Appeal had infringed Art. L. 611-11 and L. 611-14 of the Intellectual Property Code by regarding these amendments as following on from the French application, and therefore holding that they had not conferred any new features or technical novelty on the invention, with the result that the European patent and the French priority document were indeed for the same invention.

The Court of Cassation noted that claim 1 of French patent 9 406 014 was directed to a device for the adjustable occipital fixing of a helmet, comprising [in particular] a shell designed to fit on the cyclist's skull. The application also stated that once the helmet was on the wearer's head the occipital bearing block forward of the axis made it possible to fix it in place, thereby preventing it from coming off and substantially reducing any shaking. The European patent had the same wording, plus an addition to the effect that when the releasable connecting means was fastened, the occipital strap ensured traction on the block which pressed against the lower part of the head, thereby preventing the helmet's removal. Comparing the wording showed that the amendment objected to was merely a reformulation of an effect of the invention – keeping the helmet on the cyclist's head – which was already apparent to the skilled person from the earlier application. The court therefore held that this allowed the Court of Cassation to conclude that the Court of Appeal had been right to regard the European and French patents as being for the same invention, and the former as therefore being entitled to the priority of the latter.

Editor's note: See also G 2/98 as well as Court of Cassation of 6 November 2012 [11-19375].

GB United Kingdom

Patents Court of 10 July 2013 – HTC Corporation v Gemalto SA and HTC Corporation v Gemalto NV [2013] EWHC 1876 (Pat)

Keyword: priority – successor-in-title

HTC had challenged the priority claimed for Gemalto SA's European patent (UK) 0 932 865 both on the ground of entitlement to the priority right and on substantive grounds.

The applicant for the patent was STI, while the US priority application had been filed in the names of three inventor-applicants. Birss J cited Edward Lifesciences AG v Cook Biotech Inc [2009] EWHC 1304 (Pat), also a case in which the priority document had been filed by more than one person (see also second edition "Case Law from the Contracting States to the EPC" 2004 – 2011, OJ SE 3/2011, p. 187), and concluded that a patent applicant had to be a successor-in-title to the invention at the point in time when he filed his application and must be the successor-in-title of all the applicants. The judge also found, in the light of KCI Licensing v Smith & Nephew [2010] EWHC 1487 (Pat) (see also second edition "Case Law from the Contracting States to the EPC" 2004 – 2011, OJ SE 3/2011, p. 189), that if the relevant person has acquired the entire beneficial interest in the invention at the relevant time then that should be enough to satisfy the law.

All these criteria were considered to have been met. In relation to one inventor there was no issue. For the other two, Mr W. and Mr G, it was true that there was an assignment, signed by both of them, of their rights in the invention to STI, which was dated only after the date of filing of the application for the patent. Nevertheless, STI was found to have derived its right before that date via another company in the same group, STC, of which Mr W. was an independent contractor and Mr G was an employee. The judge was satisfied that as between STC and STI, STI was the beneficial owner of any inventions arising from the project. While there was no formal agreement to that effect, the judge inferred from the circumstances that STC must have agreed by conduct with STI to transfer any interest it had in the invention. STI was entitled to call for the assignment of the bare legal title from STC. Mr W.'s consultancy agreements with STC had the effect that STC was legal owner of any relevant invention by the time the later application was filed. For Mr G, Birss J held that US/Texan law applied. In the absence of evidence from either side as to this law, he could only assume that it was the same as the English law which would be applied to events in England. This was s. 39 Patents Act 1977, which would have the effect that the invention belonged to Mr G's employer, STC. In conclusion, STI was successor-in-title to all three inventors when the application for the patent was filed and thus was entitled to claim priority.

Editor's note: See also final decision in this chapter.

GB United Kingdom

Court of Appeal of 10 October 2012 – MedImmune Ltd v Novartis Pharmaceuticals UK Ltd [2012] EWCA Civ 1234

Keyword: priority – same invention

Kitchin LJ summarised the law as follows:

Section 5(2)(a) Patents Act 1977 provides that an invention is entitled to priority if it is supported by matter disclosed in the priority document. By s. 130(7) of the Act, s. 5 is to be interpreted as having the same effect as the corresponding provisions of Art. 87(1) EPC. Art. 87(1) says that priority may be derived from an earlier application in respect of the "same invention".

The requirement that the earlier application must be in respect of the same invention was explained by the Enlarged Board of Appeal in G 2/98 (OJ 2001, 413): "The requirement for claiming priority of 'the same invention', referred to in Art. 87(1) EPC, means that priority of a previous application in respect of a claim in a European patent application in accordance with Art. 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole."

The approach to be adopted was elaborated by the Court of Appeal in Unilin Beheer v Berry Floor [2004] EWCA (Civ) 1021: "...The approach is not formulaic: priority is a question about technical disclosure, explicit or implicit. Is there enough in the priority document to give the skilled man essentially the same information as forms the subject of the claim and enables him to work the invention in accordance with that claim."

In Abbott Laboratories Ltd v Evysio Medical Devices plc [2008] EWHC 800 (Pat), Kitchin J added, "So the important thing is not the consistory clause or the claims of the priority document but whether the disclosure as a whole is enabling and effectively gives the skilled person what is in the claim whose priority is in question. I would add that it must "give" it directly and unambiguously. It is not sufficient that it may be an obvious development of what is disclosed."

GB United Kingdom

Patents Court of 7 March 2013 – Samsung Electronics Co Ltd v Apple Retail UK Ltd and anr [2013] EWHC 467 (Pat)

Keyword: priority – test for "same invention"

Floyd J adopted the approach to the law on priority set out in MedImmune (see above). The task for the court was therefore:

(a) to read and understand, through the eyes of the skilled person, the disclosure of the priority document as a whole;

(b) to determine the subject-matter of the relevant claim;

(c) to decide whether, as a matter of substance not of form, the subject-matter of the claim can be derived directly and unambiguously from the disclosure of the priority document.

It followed from the authorities that the subject-matter of a claim was not the same thing as the scope of the monopoly it claimed; the test for determining priority was not the same as that for novelty. In determining novelty one simply asked whether that which was described in an earlier document would, directly and unambiguously, fall within the monopoly granted by the patent claims. To put it another way, the issue was whether the earlier disclosure would infringe (Smithkline Beecham PLC's Patent [2005] UKHL 59 – see second edition "Case Law from the Contracting States to the EPC" 2004 – 2011, OJ SE 3/2011, p 67). That the law was different for priority could be illustrated by the example, given by Jacob LJ, in Unilin Beheer v Berry Floor [2004] EWCA (Civ) 1021.

Jacob LJ had considered the extent to which priority could be lost if the invention described in the priority document included features A, B and C, but was claimed in the patent with only two of those features. Such a case had been discussed as part of the reasoning in G 2/98. Jacob LJ had said: "The fact of the matter is that when features A+B+C are disclosed, a lot must turn on what they actually are. Some inventions consist of a combination of features – the invention consists in the very idea of putting them together. In other cases that is simply not so – the features are independent one from the other. Whether, given a disclosure of A+B+C, there is also a disclosure of A or B or C independently depends on substance, not a formula. The ultimate question is simply whether the skilled man can derive the subject-matter of the claim from the priority document as a whole."

According to Floyd J, the Court of Appeal there recognised that the disclosure of A+B+C might in some circumstances not provide priority for a claim to A or B alone or to A+B. By contrast, the disclosure of A+B+C would normally deprive a claim to A, B or A+B of novelty. The additional presence of other features in the disclosure would not matter. Applying the infringement test, A+B+C would still infringe, whether the claim was to A, B or A+B. When testing for priority one must therefore guard against simply asking whether the features called for by the claim were present in the priority document. The test for claiming priority in respect of the same invention had more substance, and was less formal, than that.

GB United Kingdom

Patents Court of 22 April 2013 – Nestec S.A. v Dualit Ltd [2013] EWHC 923 (Pat)

Keyword: priority – same invention – partial priority

Nestec's European Patent  (UK) 2 103 236 related to a system comprising a capsule extraction device for Nespresso coffee-making machines. Dualit alleged that the patent was not entitled to its priority date and therefore the claims were anticipated by two "prior uses" by Nestec.

Arnold J first explained that, in order for a claimed invention to be entitled to priority from an earlier application, it had to be "supported by matter disclosed" in that earlier application (s. 5(2)(a) Patents Act 1977). Under Art. 87(1) EPC priority could only be accorded in respect of "the same invention" as one in the earlier application. In G 2/98 the Enlarged Board of Appeal equated "the same invention" in Art. 87(1) EPC with "the same subject-matter" in Art. 87(4) EPC. On the requirement of the same invention, the judge then cited the relevant passages from G 2/98, Unilin Beheer NV v Berry Floor NV [2004] EWCA Civ 1021, and Abbott Laboratories Ltd v Evysio Medical Devices plc [2008] EWHC 800 (Pat), (see passages also cited in above summary of MedImmune Ltd v Novartis Pharmaceuticals UK Ltd [2012] EWCA Civ 1234).

There was also an issue as to partial priority. This was explained by Kitchin J in Novartis AG v Johnson & Johnson Medical Ltd [2009] EWHC 1671 (Pat) as follows, after citing a passage from G 2/98: "I discern from this passage that the EPO considers it is permissible to afford different priority dates to different parts of a patent claim where those parts represent a limited number of clearly defined alternative subject-matters and those alternative subject-matters have been disclosed (and are enabled) by different priority documents. Further, this principle applies even if the claim has adopted a generic term to describe and encompass those alternatives. I do not detect anything in the decisions of the Court of Appeal in Pharmacia Corp v Merck & Co Inc [2001] EWCA Civ 1610 and Unilin Beheer which is inconsistent with this approach and in my judgment is one which this court should adopt."

Dualit disputed the priority for two distinct reasons – the housing and the inclined capsules. Claim 1 covered three arrangements for the housing to receive the capsule. It was common ground that only the first was disclosed in the priority document. Dualit contended that the claim was thus not entitled to priority; Nestec that it was entitled to partial priority. Who was right depended on whether the three arrangements were clearly defined alternatives. Arnold J found that option 2 was a clearly defined alternative to option 1, but that option 3 was not a single arrangement at all. It covered a whole range of arrangements – everything not covered by options 1 or 2. Furthermore, some of the arrangements covered by it would be quite similar to option 1 and others would be quite similar to option 2. Thus option 3 was not a clearly defined alternative to options 1 and 2.

Nestec also contended that the patent disclosed and claim 1 covered three different orientations of the capsule. It was not disputed that the priority document disclosed the first arrangement but not the second, and that the third arrangement was not expressly disclosed. Dualit contended that claim 1 was therefore not entitled to priority; Nestec that the third arrangement was implicitly disclosed.

Arnold J held that the priority document did not disclose that the capsule was inclined. While he accepted that the skilled person would, if he thought about it, realise that the arrangement described there would probably cause the capsule to tilt slightly, there was nothing to suggest to him that that would be inevitable, let alone intentional or advantageous. On the contrary, he would think that the insertion slides had been designed to minimise any such tilting. Accordingly, he would conclude that this was something that could be ignored for the purposes of the invention.

Nestec submitted that this would mean that only claim 5 was not entitled to priority; claim 1 would still be so entitled, since although it covered arrangements in which the capsule was retained in an inclined manner, they were not disclosed by the claim. Arnold J disagreed; such arrangements were expressly disclosed in the specification, and the skilled reader would appreciate that claim 1 included them. Claim 1 was therefore not entitled to the claimed priority (and so neither were any of the other claims).

The priority document was thus prior art under s. 2(3) Patents Act 1977, corresponding to Art. 54(3) EPC. Dualit contended that as the claims were not entitled to priority, they lacked novelty over the priority document. Arnold J agreed; the claims were broader than the disclosure of the priority document. Thus they could, and indeed did, lack novelty over the disclosure of the priority document even though they were not entitled to priority from it.

GB United Kingdom

Patents Court of 10 July 2013 – HTC Corporation v Gemalto SA and HTC Corporation v Gemalto NV [2013] EWHC 1876 (Pat)

Keyword: priority – same invention – multiple priorities

HTC had challenged the priority claimed for Gemalto SA's European patent (UK) 0 932 865 ("Using a High Level Programming Language with a Microcontroller").

On the requirement of the "same invention", Birss J referred to Kitchin LJ's summary of the law in MedImmune Ltd v Novartis Pharmaceuticals Ltd [2012] EWCA Civ 1234 (see above in this chapter) and Floyd J's summary of the court's task in Samsung Electronics Co. Ltd v Apple Retail UK Ltd [2013] EWHC 467 (Pat) (see above in this chapter). In Birss J's judgment, the test for priority was not a novelty test or an infringement test. It had more substance and was less formal than that (Samsung). It was certainly not an obviousness test (Abbott Laboratories Ltd v Evysio Medical Devices plc [2008] EWHC 800 (Pat)). In relation to enablement it was clearly not or at least not only an added matter test. Enablement was certainly one of the requirements for a successful claim to priority, both in the sense that what is specifically disclosed must actually be enabled (Asahi Kasei Kogyo KK's Application [1991] RPC 485) and also in the sense described in Biogen v Medeva [1997] RPC 1, in which the claim in question was adjudged to have lost priority because it covered other ways of achieving the goal which owed nothing to the principle disclosed.

The English authorities showed that entitlement to priority is a different question from the other familiar elements of patent validity: sufficiency of disclosure, novelty, inventive step and added matter. It was its own test which arose in its own context and with its own policy considerations. It contained aspects common to other areas. The test for enablement must be the same as in other contexts and the test for disclosure (clearly and unambiguously derivable, explicitly or implicitly) must be the same whether one was looking at a priority document for priority or an application for added matter. However, as between priority and added matter, one was looking at the disclosure for a different purpose.

The test for the same invention was not satisfied by claim 1 of the patent, which was not limited to application source programs written in Java, but expressly encompassed application source programs written in any high level language. However, the disclosure of the priority document, both expressly and by implication, was clear: the invention involved and required the use of Java.

For the combination of claim 1 and claim 3 (limited to Java), the judge found that the skilled reader would derive from the disclosure of the priority document the idea of compacting in general with a namespace map as an example, rather than only the specific idea of using a namespace map. The priority was therefore valid.

Gemalto had also argued for multiple priorities for claim 8. Birss J referred to Art. 88(2) EPC and the relevant part of G 2/98, as considered by Kitchin J in Novartis v Johnson & Johnson [2009] EWHC 1671 (Pat) (also quoted in Nestec S.A. v Dualit Ltd [2013] EWHC 923 (Pat) – see corresponding summary in this chapter). Claim 8 defined in five sub-paragraphs (a) to (e) a process including five steps, and then required the converter to perform at least one of those steps. However, it was not like a claim to a chemical compound with five possible alternative substitutions. Elements (a) to (e) were not alternatives and the claim was not entitled to multiple priorities because at its heart was a process consisting of all five steps.

On appeal (HTC Corporation v Gemalto SA [2014] EWCA Civ 1335 of 22 October 2014), the priority of claim 3 was again in issue. The Court of Appeal upheld the finding of the trial judge. According to Floyd LJ, the question of what a document disclosed to a skilled person took account of the knowledge and background of that person. The document only had one meaning because it was only the relevant skilled person's understanding which was relevant. What was not permissible was to go further than eliciting the explicit or implicit disclosure and take account of what a document might lead a skilled person to do or try, or what it might prompt him to think of.

Editor's note: See also first summary on same decision in this chapter.


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Case Law of the Enlarged Board