Report of the Oral Proceedings before the Enlarged Board of Appeal in case G 1/15

R. Jorritsma (NL)

Date: Munich, 7 June, 2016
Composition of the Board:
W. van der Eijk (chair)
C. Vallet (Ms.) (legal; rapporteur)
P. Carlsson (legal, external)
I. Beckedorf (legal)
F. Blumer (legal)
W. Sieber (technical)
H. Meinders (technical)
Appellant/Proprietor: Infineum USA L.P., represented by Richard Hart
Respondent/Opponent: Clariant Produkte, represented by Klaus Mikulecky
Other party:President EPO, represented by two EPO officials

The case was referred by Board of Appeal 3.3.6 (B. Czech) in T 557/13.

The chairman opened the proceedings by introducing the case and parties involved. He recited the referred questions (see below) and indicated that the Board was familiar with the issues at stake, and had taken due note of the numerous (over 40) amicus curiae briefs.

The case was considered admissible. The chairman further indicated that the appellant, opponent and EPO were given the floor in that order, in two rounds, and that members of the Board might ask questions afterwards. He wanted the 5 questions to be dealt with without being split, because of the close interdependence of the questions. He repeated the 5 questions (the full questions can be found in the decision T557/13).

The questions (in summary):

  1. Can partial priority for alternative subject matters be refused at all?
  2. If yes, is proviso of 6.7 of G2/98 (limited, clearly defined) to be used as a test?
  3. If yes to Q2, how to interpret "limited" and "clearly defined"?
  4. If no to Q2, what is the test?
  5. If yes to Q1, can divisional be held against parent (or vice versa) under A54.3?

The patentee/appellant comprehensively (1.5 h) set out his position. This position fully corresponds to what many interested parties (at least epi and some other organisations) have argued.
Some of his arguments:

  • General interest: most inventions are developed further after the first filing. If a second, improved, filing has intrinsic risks of the poisoning type, such inventions will not be protected well and active innovators are thus punished. This is increasingly relevant because of increased collaboration in innovation and hence increased demand for careful management. Self-destruction when there is no interference by others is wrong.
  • Legislation, direct and indirect (interpretation): Vienna, Paris, with the explanations by Bodenhausen, EPC, Travaux Préparatoires including FICPI 1973 Memorandum C, which links Paris to EPC A88. Conclusion: Partial (multiple) priorities are allowed, and intended to have effect only for the applicant; they cannot give rise to any right of third parties.
  • Disclosure test: this should be applied along the same principles of conceptuality as the novelty test. It is wrong to apply an additional test (literal, spelled-out) only to priorities. The conceptual approach is the right one.
  • G2/98, in particular section 6.7 (the famous proviso): The question is whether it was intended as a new test for acknowledging multiple priorities or not. We have no clue, since the decision does not explain why the proviso was made, it was not necessary for answering the question at stake, and there was no problem to be solved. So, we must assume it was not intended by the EBoA as an extra test. If it was, it was against the legislation and the legislators' intentions. T1222/11 is helpful.
  • A54.3 (Q5): a divisional is not changed compared to the parent, as to its maximum content; and it is the same from its background as the parent; only in its further examination it is treated differently, on its own merits. Therefore it cannot be a(nother) "European application" in the sense of A54.3.
  • The respondent also notes that the EPO President largely agrees with his views as does the vast majority of the amicus curiae briefs.

Some of the arguments of the respondent/opponent (much was an argued disagreement with the appellant's arguments).

  • Paris only rules that priority of an application (when filing; not of a patent later on) cannot be simply refused because the contents are not identical. Paris does not provide an absolute right to multiple priorities. This is not against Travaux Préparatoires and Memorandum, since it does not abolish the allowability of generic or-claims, but only reduces it.
  • Full applicability of partial (multiple) priorities is undesired, following the interpretation of the law and case law, because it leads to double patenting.
  • A conceptual approach for assessing partial priority is wrong, because the law, and in particular G2/98, prescribes a strict approach.
  • Proviso of G2/98 6.7 (limited number, clearly defined) is to be followed.
  • Partial priority cannot apply when ranges are involved, because ranges are, by nature, a collection of an infinite number of embodiments, against the proviso of G2/98 6.7.
  • The FICPI Memorandum C would show, at III, where it deals with later amendments in some countries, that full applicability of partial priority was not intended by the legislators.
  • A divisional is, according to the convention (A76), a different application from the parent, and therefore it can be a conflicting application under A54.3. It was also meant to be so in order to limit a practice of double patenting.
  • Even if the intentions in the 1970's were to accept partial priority, times have changed, and there would now be a need to put a limit to it.

The representatives of the EPO President argued in essence:

  • Multiple priorities are frequent, especially in pharma and chemistry and the present case will have a significant impact. The interested circles need legal certainty and predictability of the system.
  • A literal approach would depart from the EPO principles.
  • A literal approach would not lead to legal certainty, because it would compel applicants to draft complex claims. Claims need not only be complete, but also clear and concise.
  • It should be possible to discern multiple alternatives (and priorities) from a claim.
  • A conceptual approach raises concern with alternatives.
  • A conceptual approach does not imply an automatism in acknowledging priority for generic or-claims (in response to respondent)
  • A divisional is, for the purpose of A54.3, not a different application from the parent since it has the same history and does not go beyond the content of the parent (in response to the respondent).

Then members of the Board asked some questions to the parties:

Meinders: assuming that alternative subject matter having different properties would have to be spelled out, should applicant have a duty to explain it? (no clear answers from the parties, although respondent showed some support of yes).

Sieber: (to respondent): is a later broader claim after an earlier narrow claim objectionable for double patenting? If it is, this is not specific for priority situations, is it? (answer: sort of yes; no, indeed);
(to the office): is it the conceptual approach or the literal approach that should prevail? (answer: conceptual)

Beckedorf: (to respondent): what about requirement to specify alternatives later on? (answer: not only formal requirement but more, priority requires same invention, which is identical invention. If differences, then new invention, no priority)

Van der Eijk: (to respondent): what is difference in reality? hasn't assessment of disclosed subject matter changed? (answer: could be)

Blumen: (to respondent): Is FICPI Memorandum C III really to be understood as not supporting alternatives being claimed together? (no clear answer)

Van der Eijk: (to respondent): what precisely has changed in the last 40 years that would necessitate different approach? (no clear answer).

The chairman closed the oral proceedings by announcing that the Board would render its decision in November 2016 at the latest.