collision scenario with novelty of the divisional patent in question hinging on whether the claimed broader embodiment can validly claim priority to a narrower embodiment that is also disclosed (and has a valid priority) in the immediate parent patent application.
Te prevailing case law applicable to whether the priority claim in T557/13 includes a divergence of opinion on whether a small number of narrow embodiments can give rise to any level of valid priority (including what is referred to as a partial priority) for a generic embodiment encompassing them.
Te concept of partial priority has long been acknowledged to exist in relation to a claim covering a broader range of embodiments than the priority document, such that a selection of embodiments of the claim may be entitled to priority whereas other embodiments are not. However, this has previously been specifically where the claim in question lists each embodiment separately, so it is possible to clearly identify which of that list was also listed in the priority document and therefore entitled to priority.
Te situation in T557/13 (and other self- collision cases) is different, as there is no easily identifiable list of embodiments that are listed in the priority application. Instead, to acknowledge partial priority for a generic claim, it must be accepted that a notional (and not explicitly disclosed) narrower embodiment exists alongside the narrower explicitly disclosed embodiment of the priority.
Tis can be exemplified by referring back to the antibody-binding molecule example discussed above, whereby a claim to binding molecules would possess a valid partial priority for antibodies, but no valid partial priority for the notional part of “binding molecules excluding antibodies”.
opponents using self-collision as an effective way of revoking or forcing significant amendments with relatively little effort.
Te issue of priority validity and its impact on availability of prior art, including self-colliding applications, was, in December 2014, the subject of further EPO boards of appeal proceedings. In T557/13, the issue in question has arisen based on arguments regarding the validity of the priority itself. Ultimately, however, it relates to a self-
If such partial priorities are allowable then self-collision cannot occur because (a) the partial priority for the narrower embodiment portion of the claim is valid and so the parent is not prior art for that portion; and (b) the partial priority for the notional remainder of the claim is not valid for both the claim of the divisional and the parent such that both the parent and divisional change their effective date to the filing date for the notional embodiment, therefore meaning the parent is not novelty-destroying.
Te idea of notional undisclosed embodiments has not been legislated for or considered at the highest level at the EPO, so over the last few years the boards of appeal have come to differing conclusions regarding whether partial priority claims in this situation are possible. Te board in T557/13 therefore decided that due to these conflicting boards of appeal decisions and their importance in assessing novelty, the issue
Jane Wainwright is a partner at Potter Clarkson. She is a UK and European patent attorney, who specialises in the life sciences. Wainwright has provided commercially strategic advice to industrial and academic clients on patents and oppositions in the life sciences field for many years. She can be contacted at:
jane.wainwright@potterclarkson.com
of priority self-collision should be referred to the Enlarged Board of the EPO.
At the time of writing, the exact questions to be referred to the Enlarged Board have not been published. However, based on the proceedings in T557/13 to date, it is reasonable to suppose that the questions should, at least, cover the following areas: • May a generic embodiment claim a valid priority to one or more specific embodiments wholly encompassed by the generic embodiment?
• If not, how should priority be assigned to the generic embodiment in respect of the narrower (but not specifically claimed) embodiments that individually possess a valid priority? Can the generic embodiment claim therefore possess different priority dates (partial priorities) for each embodiment within a generically claimed embodiment?
• Does the European Patent Convention (EPC) prevent the generic embodiment of the divisional and the narrower embodiments of the parent being given different effective dates?
• If not, does the EPC allow for co-pending applications to include a parent application so that the divisional lacks novelty over its parent? Te answers to these (or similar) questions will provide a better understanding about whether self- collision is a real threat in European practice. In cases where this issue is currently live and critical to validity, the EPO will likely stay proceedings until the Enlarged Board’s decision is handed down. Te decision, when issued, will have a considerable impact on the future of claim draſting and divisional filing strategies in Europe. However, as it may be many months until the decision is issued, applicants should continue to ensure that they minimise their risk of falling into the self-collision trap.
T.PETER PHOTODESIGN-TP DE /
SHUTTERSTOCK.COM
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