“They’re dead, Jim.”
Like the red-shirted crewman in the original series of Star Trek*, the poisonous divisional has apparently breathed its last, though in this case in the comfortable home (for the time being) of the Boards of Appeal in the Isar building of the EPO, rather than a few miles outside of Los Angeles at the Vasquez Rocks where pretty much every episode of Star Trek appears to have been partially filmed.
In this case, the fatal weapon was not a phaser, but a blunt instrument of similar vintage – FICPI Memorandum C (M/48/I) of the travaux préparatoires to the EPC 1973. The analysis of partial priority in this document was used heavily by the Enlarged Board in G1/15 (see 5.2.1 in particular) to indicate how partial priority was embedded in the European patent system, and how it allowed a resounding “No” to be given to the first question referred to the Enlarged Board of Appeal, repeated in all its tongue-tripping elegance below:
“1. Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one of 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?”
The “poisonous divisional” attack looks for a family containing two applications in the jurisdiction, with a broadening amendment of some kind made between priority filing and later application. The argument (in highly abbreviated form) is that the broadening invalidates the priority claim, allowing the whole contents of the one application to be used to destroy the novelty of the relevant claim(s) of the other. The reasoning in G1/15, derived from the FICPI Memorandum, is in effect that the broadened patent claim looks a bit like a plum. Whatever the wording of the claim, there is a partial priority in place, as the claim contains two elements (or more, in more complicated circumstances), and can be interpreted to a claim as “element one OR element two”. One element is the “stone” of the plum, clearly and unambigously derivable from the priority application under G2/98 principles, and so entitled to the priority date. The other element is the “flesh” of the plum, not derivable in the same way and not entitled to the priority. The decision does not actually spell out why the poisonous divisional attack does not work (as usual, they stick to answering the question referred to them), but by inference, the “core” is safe because it is entitled to the priority date, whereas while the “flesh” may not be entitled to the priority date, this subject matter doesn’t have an earlier date in the poisonous application either.
In the Whack-a-Mole world of EPO jurisprudence, it is possible that in nailing down the coffin in which poisonous divisionals are buried, a nail has jumped up elsewhere, leaving another line of attack against claims generalised over a priority disclosure. There are some types of case where an attack on the priority claim is frequently made – one is in patent filings associated with standards bodies, as there is typically a lot of well-documented disclosure during the priority period. A typical pattern is the filing of a provisional application before a disclosure by engineers to a standards body covering an embodiment to solve a particular technical problem, followed by a lot of discussion by engineers from many companies after the disclosure, at the end of which a solution similar, but different in at least some detail, from the original disclosure in the provisional application is reached and adopted in the emerging standard. The patent attorney working with the first group of engineers then files a patent application claiming priority from the provisional application but with claims crafted to cover both the original embodiment and the standardized solution.
Claim 1 of this kind of case will typically contain wording generalised in some way beyond that of the priority disclosure. Experience suggests that the Opposition Division at least tends to be reluctant to entertain attacks on the priority claim where the priority application embodiment clearly falls within the language of the claim. The Opposition Division will normally refer to the second paragraph of this part of the EPO Guidelines (which do not discuss partial priority) and typically find that the priority claim is upheld unless the claim bears no resemblance to the priority disclosure at all. This approach may encourage the patentee to game the system to obtain a monopoly which benefits in part from the work of a different group altogether – those engineers who have established that the best technical solution is the one embodied in the standard, rather than the one set out in the original disclosure.
In such a case, the value of the claim may well be in the flesh of the plum (which covers the implementation that parties must use to be standard-compliant) and not in the stone (the original disclosure). Can the EPO’s new found enthusiasm for partial priority be used to change this attitude to claims where there has been broadening since the priority disclosure? While it has been recognised that this should be possible (see for example the CIPA amicus brief on G1/15 at 1.22), I am not aware that this has been fruitful ground in the past. The argument following G1/15 would appear to be as follows:
- The claim in the patent is a generalisation of the priority embodiment – the patent claim therefore contains both “stone” (scope directly and unambiguously derivable from original disclosure) and “flesh” (scope extending beyond that which is directly and unambiguously derivable from original disclosure).
- Following G1/15 (see section 6.4 in particular) and the FICPI Memorandum, the claim can be interpreted as claim to “flesh” OR “stone”. It is not relevant that the claim does not contain “or” language (see FICPI Memorandum as referenced at G1/15 5.2.1).
- Again following G1/15, the claim attracts partial priority – “stone” has the original priority date, whereas “flesh” has the application date.
- There is a disclosure between the priority and application date that falls within the scope of “flesh”. In determining novelty, each branch of the “or” claim must be considered separately. If either branch of the claim is not novel, then the claim is not novel.
- The “stone” branch of the claim is entitled to the priority date, and is novel over the disclosure. However, the “flesh” branch of the claim is not entitled to the priority date, and lacks novelty over the the intervening disclosure.
- As one branch of the claim lacks novelty, the claim as a whole lacks novelty.
While this approach clearly offers the patentee an amendment strategy (limiting the claim to cover only the stone, so the claims is fully entitled to priority), in many cases this will accomplish the opponent’s objective as the flesh is valuable, but the stone is not. There doesn’t appear to be anything particularly radical about this approach, and it is entirely likely that this formulation has been tried already – perhaps in response to G3/93, which was directed to citation of a disclosure corresponding to the priority document where the priority claim fails. G1/15 may be of most use as a way to encourage the Examiner (or Opposition Division, or Board of Appeal) to look beyond the Guidelines, and to consider the issue of priority as one having a middle ground in between “valid priority claim” and “invalid priority claim” when neither alternative appears entirely fair. Anyway, I would be really interested to hear about the results.
Meanwhile, in the California desert, a battered and bloody mess rises slowly from the ground. Somehow different from before, and no longer bleeding, it finds that it has an irresistible craving… for flesh.
“It’s life, Jim, but not as we know it”.
Richard Lawrence 14 February 2017
*According to the Internet it’s only actually security red-shirts that are at high risk on the Enterprise. Operations and Engineering red-shirts are relatively safe.