This opposing view has been detailed by one of the opponents in the Nestec case T 1674/12, which unfortunately will not be the case that settles the issue because a referral to the Enlarged Board has not been made. As noted last week, the Board decided in the end to revoke the patent, and will be issuing their written decision later. Whether their reasons will take into account the partial priority issue is not yet known. I suspect they will simply bypass the issue because the patent was invalid for other reasons anyway [Update 19/10/13: It appears my suspicions were correct; the Board did not even get to the issue of partial priority at the hearing, so it will definitely not feature in the reasons for the decision]. For the time being, it is interesting (to me at least) to see how the other side's view on the partial priority issue has been expressed. The following is a rough translation of the relevant portion from the opponent's letter from 9 September 2013, which I have annotated with hyperlinks where appropriate. The original is available on the register here. My apologies for any errors or omissions resulting from my less than ideal language skills. If you can come up with a better translation, I would be happy to replace it.
2 . On the issue of partial priorityThis opposing view looks at least superficially persuasive, citing much relevant case law in support. The main flaw in the argument, however, is the assertion that the Enlarged Board in G 2/98 did not consider that all of the examples in the FICPI memorandum could justify a claim having a valid claim to partial priority under Article 88 EPC. If this was the case, it is very strange that the Board made no mention of this in their reasons. The Board clearly approved the memorandum and its justification for Article 88 EPC, so the argument that the criterion of "a limited number of clearly defined alternative subject matters" somehow makes some of the examples in the memorandum invalid is to my mind implausible. If instead we take all of the examples in the memorandum, which the Board in G 3/98 certainly at least considered, to be valid then the opponent's argument must fall away and a claim to partial priority of the kind in the Nestec case must be valid.
The patentee seeks, in its letter of 15 July 2013, to criticize the British decision of Nestec v Dualit especially regarding the issue of the invalidity of the priority of claim 1 (and by default novelty vis-à-vis document D1).
2.1. Position of the proprietor
The incumbent continues to assert that claim 1 has a partial priority that immunizes against the lack of novelty vis-à -vis document D1 . In support of this assertion , the owner cited and commented on a recent decision T 1222/11, which also refers to a part of the preparatory work of the EPC 1973, namely a memorandum of FICPI, mentioned in the reasons of the Enlarged Board of Appeal G 2/98.
G 2/98 accepted the principle of allocating separate priority dates for different subject matter covered by the same generic type of claim, provided that it leads to "a claim having a clearly defined limited number of alternatives".
According to the proprietor, the decision T 1222/11 as well as the memorandum of FICPI lends credence to the theory that the above condition posed by the Enlarged Board of Appeal is satisfied if it is possible to "identify conceptually" alternative objects by comparing the claim and the contents of the priority documents.
The approach proposed by the holder should not be followed for the following reasons.
2.2. Neither decision T 1222/11, nor the contents of the memorandum of FICPI, is authoritative
First, the decision T 1222/11 (by Board 3.3.7) is an isolated decision. In point 11.5 of the reasons, it is explicitly stated that the Board departs from the approach that has been followed in previous decisions T 1877/08 (by Board 3.3.10 ), T 476/09 (Board 3.3.9 ), T 1443/05 (Board 3.3.1 ) and T 1127/00 (Board 3.3.8) . We can add to this list the decision T 70/05 (Board 3.3.8) , which confirms the reasoning in T 1127/00.
Thus the decision T 1222/11 is opposed to the dominant jurisprudence of the Boards of Appeal. If only for that reason, it should not be followed by the present Board.
With regard to this Memorandum of FICPI, it is true that the opinion G 2/98 states in 6.4 that we can consider that it "express[es] the legislative intent underlying Article 88(2), second sentence, EPC". The purpose of the memorandum was indeed to suggest that the legislature can allocate multiple priorities in a claim. The proposal was accepted , and it is in this (narrow) sense that the memorandum reflects the ratio legis of Article 88.
Specifically, the Enlarged Board takes up the distinction made in the memorandum between the claims of "AND" type and claims of "OR" type. Only the second type can lead to the allocation of multiple priorities (paragraphs 6.5 to 6.7 of the reasons).
However, the Enlarged Board of Appeal has not expressed the opinion that the detailed content of the memorandum should be taken as is, without changing anything or adding an assessment of whether, for a given generic claim, partial priority can actually be recognized for a portion of the claim.
The Enlarged Board has actually implicitly taken a contrary position when said in the passage quoted in the opinion, at the end of Section 6.7 of the reasons that "The use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2), second sentence, EPC is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters". Indeed, this condition of a "limited number of clearly defined alternative subject matters" is not listed in the Memorandum of FICPI. It is therefore a condition that was added to the memorandum by the Enlarged Board of Appeal , when analyzing the situation of type "OR" claims.
Consequently, it is not correct to take the examples cited in the memorandum of FICPI and indicate that the Enlarged Board approved the allocation of multiple priorities for these examples. The Enlarged Board has only taken over the general framework of the memorandum of FICPI (distinction between claims of type "OR" and "AND"), adding the condition of a "limited number of clearly defined alternative subject matters" regarding claims of "OR" type, without any comment on the illustrations of "OR" type claims presented in the memorandum.
Only the decision T 1222/11 has taken over the sample claims of "OR" type mentioned in the memorandum, but in doing so it follows an approach in contradiction to Boards 3.3.1 , 3.3.8 , 3.3.9 and 3.3.10 .
In addition, on the merits, the approach of the proprietor, which is based on the decision T 1222/11 and the Memorandum of FICPI taken in its entirety, is not consistent with the view G 2/98 as is shown below.
2.3 . The faulty reasoning of the decision T 1222/11 and part of the memorandum FICPI
In section 11.4 of the reasons for the decision T 1222/11, Board 3.3.7 is critical of the jurisprudence of Boards 3.3.1 , 3.3.8 , 3.3.9 and 3.3.10 of the fact that this jurisprudence has held that the requirement for the Enlarged Board on the "limited number of clearly defined alternative subject matters" characterizes the manner in which the subject of an "OR" claim must be defined. In point 11.5.2 of the reasons, Board 3.3.7 offers its own interpretation of the condition laid down by the Enlarged Board, that this condition simply refers to the ability to identify conceptually, by a comparison of the claimed subject matter with priority documents, a limited number of clearly defined alternative subject. This theory is also extended to the case of partial priority (paragraph 11.6 of the reasons).
But this interpretation cannot be correct because it leads to rendering meaningless the condition "limited number of clearly defined alternative subject matters" posed by the Enlarged Board. Indeed, it is always possible to divide conceptually (that is to say abstractly and thus artificially) a generic object into two objects of type A and non-A. Also, one wonders in what situations allocating multiple priorities (or partial priority) should not be accepted, following this approach. In other words, to follow the proposed T 1222/11 interpretation, the condition imposed by the Enlarged Board had simply no reason to be: it is not a requirement.
In addition, the Board 3.3.7 reviews examples in the memorandum of FICPI, and sees a confirmation of its theory (Section 11.5.8 of the reasons). But in fact, at least some of these examples are problematic.
The first example cited (listed in Section 11.5.5 of the reasons) seems consistent with G 2/98. In this example, a first priority document discloses subject matter with the element chlorine, a second priority document discloses subject matter with the elements bromine, iodine and fluorine, and a generic claim in the subsequent request is subject matter with a halogen. In this case, the generic claim has the first priority in terms of chlorine, and the second priority that is bromine, iodine and fluorine.
This first example appears to conform to the G 2/98, since the generic term "halogen" corresponds to a limited number of clearly defined alternative subject , namely the four elements chlorine, bromine, iodine and fluorine.
The situation is different when a generic claim covers a continuum of embodiments . This is particularly the case in the third example of the memorandum of FICPI in point 11.5.7 of the reasons of T 1222/11.
In this example, a first priority document discloses a method of coating the interior of a pipe, and a second priority document discloses a method of coating the walls of bottles or any other hollow body. The memorandum suggests that the provision of the EPC proposed on multiple priorities will permit a generic claim in a subsequent application of a method of coating the inner walls of a hollow body. The memorandum justifies this approach by the desire to avoid having to unnecessarily increase the number of claims of patent applications.
The memorandum states in this regard: "if multiple priorities are not allowed for a single claim, the applicant must write parallel claims, one on the method of coating inner walls of the pipe, which will benefit from the first priority, and the other on the method of coating inner walls of hollow body other than the pipes, which will benefit from the second priority".
But this position is completely incompatible with the position of G 2/98, that for the condition of the "same invention" to be met for a claim to be eligible for the priority of an earlier application means that: "the person skilled in the art [must ], using common general knowledge, directly and unambiguously deduce the purpose of the claim of the previous application as a whole".
According to the reasoning of the memorandum of FICPI, a putative claim "on the method of coating inner walls of bodies other than hollow pipes" is supposed to benefit from priority in the second priority document. The second document priority only describes a "method of coating walls of bottles or any other hollow body" and therefore does not describe a method of "coating internal walls of hollow bodies other than pipes". According to G 2/98 - and the application has been made consistently by the Boards of Appeal - this claim devised by the FICPI memorandum therefore cannot benefit from the second priority. It is necessary that the second priority document itself describes a "method of coating inner walls of bodies other than hollow pipes" for priority to be validly claimed.
Correspondingly, the generic claim proposed in the third example of the memorandum of FICPI cannot benefit from the multiple allocation of the first priority and the second priority. Not that the claim was a generic form - since this does not raise any difficulty in the case of first example of halogens, but the fact that the concept of cladding inner walls of hollow bodies covers a multitude of possibilities (while G 2/98 requires a limited number of subject matters), which are not clearly defined (although the G 2/98 requires that the objects are clearly defined). Thus, this claim cannot really benefit from the second priority, which is the only one to disclose the generic concept of cladding hollow bodies, a concept that is not divisible by a limited alternative objects clearly defined number.
In fact, the Board 3.3.7 seems to have identified the contradiction between the third example of the memorandum of FICPI and the position of G 2/98. But for the Board, the position of G 2/98 does not apply just to the situation of multiple or partial priorities .
It is true that the question that the Enlarged Board of Appeal responded to did not specifically concern the situation of multiple or partial priorities . Nevertheless, the principle laid down by the Enlarged Board has a very broad application and also covers claims of type "OR" with multiple or partial priorities. Thus, the allocation of a certain effective date of only part of the subject matter of a claim assumes that the subject matter can be directly and unambiguously derived by the skilled person from the relevant reference document .
To decide otherwise would be to establish an exception to the test for disclosure that was developed by the Enlarged Board of Appeal over the years including G 3/89, G 11/91, G 2/98, G 1/03 and G 2/10 - while nothing justifies such an exception.
This approach, termed the "gold standard" in G 2/10, is indeed precisely considering the coherent separate questions of the validity of the right of priority (Art. 87 EPC ), the extension of subject matter (Art. 123(2) and 76(1) EPC) and novelty (Art. 54 EPC).
And, in this consistent approach, the central criterion is direct and unambiguous disclosure for the skilled person. This is why the reference to the possibility of identifying conceptually alternative subject matters proposed by T 1222/11 and endorsed by the patentee has no place in this coherent approach. It is, in effect trying to implement a so-called rule of logic to conclude in a systematic way the possibility of benefiting from the allocation of multiple or partial priorities.
However, using a rule of this type of logic has been firmly rejected by the Board of Appeal, in a related context, that of the evaluation of disclaimers. The Enlarged Board [in G 2/10] concluded that it was not possible to make a case by case evaluation of the direct and unambiguous disclosure of relevant subject matters.
The memorandum of FICPI was written in 1973 , well before the establishment of the "gold standard" mentioned above. It is not surprising that it is not fully compliant with this standard. It is for this reason that the Enlarged Board of Appeal made clear in the G 2/98, the condition of a "limited number of clearly defined alternative subject matters", the only way to ensure consistency of the whole practice of the EPO .
2.4. Conclusion concerning claim 1
In view of the foregoing, the reasoning of the patent holder cannot be followed. Claim 1 of the main request does not cover a "limited number of clearly defined alternative subject matters". In fact the claim covers an infinity of subject matters that are not identifiable to each other - as has already been explained above. This claim cannot therefore benefit from the claimed priority, even partially. So there is a lack of novelty vis-à -vis D1.