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Author Topic: Is this valid prior art in Europe? (Which dates matter?)  (Read 478 times)

Robert K S

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An EPO application which claims priority back to a U.S. provisional application is being rejected on the basis of a WO publication of another application by the same applicant-assignee.  The priority date of the application being prosecuted is BEFORE both the international publication date and the international filing date of the reference application, but AFTER the priority date of the reference application, which traces to a (different) U.S. provisional application.

Is the reference valid prior art in the EPO?

(In case it matters, the international filing date and international publication date of the application being prosecuted are both after the international filing date and international publication date of the reference application.)
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Robert K S

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Re: Is this valid prior art in Europe? (Which dates matter?)
« Reply #1 on: 07-19-18 at 02:16 pm »

A little more Googling and I found this:

The European Patent Convention - Convention on the Grant of European Patents (European Patent Convention) - Part II Substantive patent law - Chapter I Patentability - Article 54 Novelty

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(1) An invention shall be considered to be new if it does not form part of the state of the art.
(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.
(3) Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art.

Guidelines for Examination - Part G Patentability - Chapter IV State of the art - 5. Conflict with other European applications - 5.1 State of the art pursuant to Art. 54(3)

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The state of the art also comprises the content of other European applications filed or validly claiming a priority date earlier than but published under Art. 93 on or after the date of filing or valid date of priority of the application being examined. Such earlier applications are part of the state of the art only when considering novelty and not when considering inventive step.

It makes little sense to me that filing a U.S. provisional application, which is not public, sets a bar date for you in Europe should an application ever issue or publish out of the U.S. provisional application, given that the point of Article 54(2) is to define the prior art as comprising everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application. and article 54(3) only makes reference to "dates of filing", not priority dates of filing of nonpublic provisional applications.
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Euro-Pat-Att

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Re: Is this valid prior art in Europe? (Which dates matter?)
« Reply #2 on: 07-19-18 at 04:03 pm »

Earlier filed but later published EP applications are priort art for NOVELTY ONLY (very important to realise). Apparently (but obviously I was not present when the EPC was negociated) the purpose is to limit double patenting.

A PCT application, if it was published in English, French or German, and if the filing fee for entry in the EP regional phase is, counts as a regular EP application.

Considering the purpose, it is logical that the filing date of the earliest VALID priority, counts as the filing date for prior art purposes. THis is specified in A 89 EPC.

The applicant can still get a patent if he manages amend the claims to make them novel. The reference application is ignored for inventiveness.

Considering that apparently both PCTs claim priority of a US provisional, and that it is well known that often US provisionals are NOT valid priorities under the EPC, there could be an escape here as well if the priority of the prosecuted application is valid, and if the priority of the reference application is NOT valid.

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Robert K S

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Re: Is this valid prior art in Europe? (Which dates matter?)
« Reply #3 on: 07-19-18 at 04:15 pm »

Considering that apparently both PCTs claim priority of a US provisional, and that it is well known that often US provisionals are NOT valid priorities under the EPC, there could be an escape here as well if the priority of the prosecuted application is valid, and if the priority of the reference application is NOT valid.

How would that be shown in the EPO?  I.e., would would be the mechanics of making such a showing?

Is that really a road that the applicant wants to go down, if the reference application also belongs to the applicant?

Can an applicant turn around and copy the claims in a divisional of the reference application and say, "See, the EPO already decided that this disclosure of the reference application teaches this subject-matter, let me have the claims here?"
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Euro-Pat-Att

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Re: Is this valid prior art in Europe? (Which dates matter?)
« Reply #4 on: 07-20-18 at 04:20 am »


How would that be shown in the EPO?  I.e., would would be the mechanics of making such a showing?

If the examiner asserts in an OA: application XYZ is prior art under A54(3), respond with: No it's not, because priority of XYZ from US-provisional-1 was not validly claimed, because US-provisional-1 does not disclose A B and C in combination. The examiner will then look into it and let you know whether he/she agrees or not.

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Is that really a road that the applicant wants to go down, if the reference application also belongs to the applicant?

It carries a certain risk, because the examiner is then likely to have a close look at the priority situation of the prosecuted application and may come to the same conclusion.

That's why I wrote: 'if the priority of the prosecuted application is valid, and if the priority of the reference application is NOT valid'. Same applicant or not is not relevant. Validity of priority claim is. (but considering that its the same applicant, there's a fair chance that both are valid, or neither is valid, which doesn't help in this case)

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Can an applicant turn around and copy the claims in a divisional of the reference application and say, "See, the EPO already decided that this disclosure of the reference application teaches this subject-matter, let me have the claims here?"

I am not sure I understand you correctly, but I think the answer is 'usually NO'. It's important to realise that disclosure, at EPO, means that the boundaries of the invention are stated.

Novelty, however, is destroyed if an embodiment somewhere within those boundaries is present in the prior art. For instance, the disclosure of 'iron' in the reference application destroys the novelty of 'metal' in the prosecuted application. So the fact that the reference application is novelty-destroying for a claim does NOT at all mean that the claim is considered disclosed in reference application. This is unrelated.

So if the reference application is still pending, and if it indeed discloses the claim (ie, discloses all boundaries of the claimed domain in combination), then your idea might work. But this is quite unlikely (considering that a second application-family was filed, and that this must have happened for a reason. If the second invention was already in the first application, why file the second application?).
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Toot Aps Esroh

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Re: Is this valid prior art in Europe? (Which dates matter?)
« Reply #5 on: 07-20-18 at 04:29 pm »

That's why I wrote: 'if the priority of the prosecuted application is valid, and if the priority of the reference application is NOT valid'. Same applicant or not is not relevant. Validity of priority claim is. (but considering that its the same applicant, there's a fair chance that both are valid, or neither is valid, which doesn't help in this case)


Yes as to the underlined part, when it comes to thinking about the patent law mechanics only.

But "same applicant or not" certainly is relevant if Robert goes off gallivanting and proves up - quite publicly - bad priority in the reference application, which happens to be one of the applicant's "crown jewels".

This is always something which must be discussed with the client so they can decide if they want to attack their existing IP in order to get the new case allowed.
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Euro-Pat-Att

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Re: Is this valid prior art in Europe? (Which dates matter?)
« Reply #6 on: 07-20-18 at 06:09 pm »

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But "same applicant or not" certainly is relevant if Robert goes off gallivanting and proves up - quite publicly - bad priority in the reference application, which happens to be one of the applicant's "crown jewels".

I only have have one reply: don't shoot the messenger. Or, in other terms, somebody has to have the nerve to say: 'the emperor has no clothes'.

As patent professionals we are obliged to inform our clients correctly. Even if it may have negative consequence on our future business, even if it may expose a dubious call we made in the past.  We receive a very decent hourly rate, partly because in serving our customers we may harm our future business prospect.

If you were the client, would you no want to know that your 'crown jewels' are worthless?

Would you accept that your medical doctor didn't discuss some worrying lab results because you might not like to hear them?

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This is always something which must be discussed with the client so they can decide if they want to attack their existing IP in order to get the new case allowed.

Of course it should be discussed with the client. But we should also guard our clients against emotional decisions.

IP = a tool in a business plan.  Rationality rules.

There are no crown jewels. Just patent rights with varying levels of probability that they will survive a serious attack and varying levels of relevance to present and envisaged business.

And arguing that a priority is invalid according to EPO standards does not mean it is invalid in other PO's, and is not 'attacking their existing IP', but just doubting the validity of the priority claim in one jurisdiction. Priority may still be valid in other jurisdictions, and the IP may stand even without valid priority.
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Toot Aps Esroh

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Re: Is this valid prior art in Europe? (Which dates matter?)
« Reply #7 on: 07-21-18 at 12:28 pm »



As patent professionals we are obliged to inform our clients correctly. Even if it may have negative consequence on our future business, even if it may expose a dubious call we made in the past.  We receive a very decent hourly rate, partly because in serving our customers we may harm our future business prospect.

Where did I indicate otherwise? 

If you were the client, would you not want to know that your 'crown jewels' are worthless?

Would you accept that your medical doctor didn't discuss some worrying lab results because you might not like to hear them?


Again, these appear to be unfair characterisations of what I said.  As you yourself quoted me on, below, nothing I said indicated hiding the bad facts from the client.

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This is always something which must be discussed with the client so they can decide if they want to attack their existing IP in order to get the new case allowed.


There are no crown jewels. Just patent rights with varying levels of probability that they will survive a serious attack and varying levels of relevance to present and envisaged business.


I know many corporations who would argue that there are indeed crown jewels of their patent estate, just as they would also admit they have patent families of questionable worth (cover no product of their own and likely have not much in the way of preclusive effect on competitors).

They would tell you that the crown jewel is that patent family protecting an outstanding feature of their billion dollar product which thus far has kept their competitor's non-infringing product in an "also-ran", inferior status with a minority market share.  That competitor also has competent patent counsel and is aware there may be weaknesses in the patent's priority claim for those claims which may be relevant, but fears the costs of dealing with patent infringement and invalidity proceedings it is unsure it can win. 

But if the patentee himself goes on record stating that his EP does not deserve the priority he claimed, this is helpful in removing that uncertainty.

And yes, as you mention the rules on what is required to be present in the alleged priority document are not so strict in some places (e.g., US) as they are in others (e.g., under EPC). But this thread's question is what is valid priority for Europe.  But even looking outward, the statements made on the record by the patentee will be useful fodder in other jurisdictions.
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Euro-Pat-Att

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Re: Is this valid prior art in Europe? (Which dates matter?)
« Reply #8 on: 07-22-18 at 04:55 pm »

Reading back my own reply I realise it may look harsher than intended, sorry.

Yes, indeed, it is of course not ideal to question the validity of your own priority. But if the competitor's patent counsel is as competent as you imply, he will presumably have evaluated this already.

I realise the problem of the topic starter is an annoying one. Unfortunately there's not much to be done.
The only good solution is to find a technically/commercially irrelevant novel feature in the description and limit the claims to that, to restore novelty.
The second possibility that we are arguing about has significant disadvantages, to be used exceptionally and after informed consent of the applicant.
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