OJ EPO SE 6/2017, p116 - F. Priority

DE Germany

Federal Court of Justice, 15 September 2015 (X ZR 112/13) – Partially reflecting foil

Keywords: priority – same invention – disclosure

The patent at issue concerned the use of an image projector, a reflecting surface and a smooth, transparent and partially reflecting foil to display images at the back of a stage. The application had claimed the priority of a German utility model (L2).

The Court noted that, under Art. 87(1) EPC, a European patent application could claim the priority of a previous utility model application if both were for the same invention. That condition was met if the combination of features in the new application had been disclosed in the previous one as part of the invention claimed there, i.e. the subject-matter as disclosed by the two applications had to be identical. But what the previous application disclosed as its subject-matter was not limited to the claims: it had to be determined on the basis of the application as a whole. To assess whether both applications' disclosures were identical, the rules on examining for novelty applied. According to the Court's established case law, that meant that the skilled person had to be able to derive the new application's technical teaching directly and unambiguously from the previous one as a possible embodiment of the invention (Federal Court of Justice judgment X ZR 107/12 – Communication channel).

On the auxiliary request, the Federal Patent Court had held that feature 3e, whereby the foil's surface area was at least 3 x 4 m, had not been disclosed in L2, which contained no information or drawings from which those specific dimensions could be derived directly and unambiguously.

The Court disagreed. It ruled that the priority of a previous application stating a range could always be invoked if the subsequent application claimed an individual value or a subrange within that range that had been disclosed as a possible embodiment of the invention in that previous application. Thus the patent in suit could indeed claim the priority of L2. In particular, L2's lack of specific foil dimensions did not preclude this. The lack of specific dimensions suggested that the previous application disclosed foil of different sizes, so including smaller than 3 x 4 m; without limiting itself to specific dimensions, L2 indirectly disclosed a broad range that was restricted only by the term "stage" and in any event encompassed standard stage dimensions.

FR France

Paris District Court, 15 January 2016 (13/17432) – Time Sport v Decathlon

Keywords: priority – same invention – limitation procedure

Time Sport, a company making bicycles and related equipment, owns European patent 0 682 885 for a "device for retaining a helmet on the occiput", for which it claimed the priority of French patent 9 406 014 of 10 May 1994.

Decathlon argued that Time Sport could not claim the priority of the French patent because, following the rewording of the European patent during limitation proceedings, the two patents no longer related to the same invention. Therefore the validity of claim 1 of the European patent had to be assessed as at the date of filing (9 May 1995), not the date of priority.

Explaining how priority worked, the Court observed that, under Art. 87 EPC, a patent application that claimed the priority of an earlier application had to be for the same invention: the subsequent application had to have the same subject-matter as the first one and be identical in substance. The form was irrelevant provided that the characterising features appeared clearly and precisely, not necessarily in the claims but in the content of the original application as a whole (description, claims and drawings) and – as the EPO's boards of appeal put it – as long as "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".

Decathlon argued that the invention in the priority document and that in the European application were not identical because the wording of the European patent had been modified. In particular, claim 1 of the French patent had been divided into two claims in the European patent, while certain characterising features had been omitted and an embodiment had been added. Moreover, it was telling that Time Sport had maintained its French patent by paying the renewal fees.

The Court disagreed. The European patent reproduced the essential features as clearly and precisely disclosed in the priority document, in the same arrangement and as functioning in the same way to obtain the same technical result, with no additions or modifications, and so was for the same invention. On the argument concerning the continued payment of fees, it found that their payment did not amount to an admission by Time Sport that its European and French patents were not identical. The priority of the French patent of 10 May 1994 could therefore be claimed for the European patent.

The Court dismissed Decathlon's further objection of a lack of inventive step. It examined the prior art and held that the Giro helmet, in particular, did not destroy the invention's novelty because it aimed to solve a different problem from Time Sport's patent. The skilled person could not, using only his common general knowledge and routine operations, start with the Giro helmet and arrive at the solution in that patent. Besides, although the Giro helmet document had been cited in the application for the patent in suit, it had not been considered by the EPO's examiners.

Editor's note: The Court of Cassation also had to decide whether the patent was entitled to the French priority, this having been raised in an appeal brought before it against a Paris Court of Appeal decision of 16 December 2014 summarised elsewhere in this publication. It too decided that it was (decision 15-16647 of 22 November 2016; for a summary in French, see PIBD (2017) 1063-III-1). Citing Art. 87 EPC, it held, in particular, that "a patent application is entitled to the priority of a previous application only if the previous application is for the same invention, i.e. only if the skilled person can derive the subject-matter of the [new] claim directly and unambiguously, using common general knowledge, from the previous application as a whole".

GB United Kingdom

Patents Court, 1 December 2014 – Idenix Pharmaceuticals Inc. v Gilead Sciences Inc. & Ors [2014] EWHC 3916 (Pat); Court of Appeal, 8 November 2016 – Idenix Pharmaceuticals Inc. v Gilead Sciences Inc. & Ors [2016] EWCA Civ 1089

Keywords: priority – entitlement to priority – successor in title – conflicting PCT application as prior art

Gilead's novelty attack on European patent (UK) 1 523 489, owned by Idenix and others, was based on its own co-pending international application ("the Pharmasset PCT"), which had been filed by Pharmasset Barbados. This application could only be relied on if it was entitled to priority from an earlier US application ("US368"). Idenix disputed that Pharmasset Barbados had been entitled to claim priority from US368 as the inventor's successor in title when it filed the Pharmasset PCT. This gave rise to complicated issues of fact, US law and domestic law.

Arnold J referred to the legislative framework, s. 5 Patents Act 1977, Art. 87 EPC, Art. 8 PCT, Art. 4A(1) Paris Convention, and earlier case law, Edwards Lifesciences AG v Cook Biotech Inc [2009] EWHC 1304 (Pat), KCI Licensing Inc v Smith & Nephew Plc [2010] EWHC 1487 (Pat), and HTC Corporation v Gemalto SA [2013] EWHC 1876 (Pat) (summaries of these judgments can be found, in, respectively, "Case Law from the Contracting States to the EPC" 2004 – 2011, OJ Special edition 3/2011, 187 and 189, and "Case Law from the Contracting States to the EPC" 2011 – 2014, Supplementary publication, OJ 2/2015, 122).

According to Gilead's main argument, the inventor's rights to the invention, which vested in his employer, Pharmasset Georgia, were assigned to Pharmasset Barbados by virtue of an R&D agreement between these two companies. Although Gilead could not provide an executed copy of the R&D agreement, from the available evidence the judge concluded that, on the balance of probabilities, the agreement had been signed. Upon construing the terms of the agreement in accordance with the applicable law of the State of Georgia and US Federal patent law, he further concluded that the agreement was effective to assign the rights in respect of the invention described and claimed in US368 to Pharmasset Barbados. Accordingly, Pharmasset Barbados was the inventor's successor in title at the time it filed the Pharmasset PCT. This application was therefore entitled to priority from US368 in the UK.

An alternative argument of Gilead was that if the R&D agreement was not effective to transfer legal title in the invention, it was nevertheless effective to transfer the entire beneficial interest in the invention to Pharmasset Barbados. Proceeding therefore on the assumption that it was merely an agreement to assign the invention, the judge concluded that Pharmasset Barbados was the equitable owner at the time of filing the Pharmasset PCT and hence successor in title for the purposes of the claim to priority.

The relevant claims were held to be anticipated by the Pharmasset PCT.

In the Court of Appeal, Kitchin LJ set out some obiter remarks on the priority entitlement issue (Idenix's appeal being dismissed on other grounds). Responding to Idenix's submission that for the meaning of "successor in title" in Art. 4A Paris Convention one must identify a notion of ownership and transfer of ownership common to all signatories to the Convention, Kitchin LJ expressed the provisional view that KCI and HTC (supra) had been correctly decided in this regard. The Paris Convention did not purport to identify the requirements for the effective transfer of title to an invention, and these matters were left to the relevant national law (cf. also T 205/14). The notion that it was the transfer of the substantive right and title to the invention which was important made eminently good sense. Nevertheless, there might be other materials and decisions bearing on the issue. In conclusion, he considered that it was not necessary in this appeal to express a final view on the issue.

GB United Kingdom

Patents Court, 23 November 2015 – Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors [2015] EWHC 3366 (Pat)

See Chapter B.1. State of the art.

GB United Kingdom

Patents Court, 10 August 2016 – Actavis Group PFC EHF & Ors v ICOS Corp [2016] EWHC 1955 (Pat)

See Chapter B.1. State of the art.


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