The priority trap: new disclosure requirements in Germany

Last year, the German Federal Court of Justice (FCJ) rendered its much noted decision in the UV-unempfindliche Druckplatte (UV-insensitive printing plate; docket number X ZR 3/10) case, that highlights the requirements for claiming priority.

Legal environment

According to German practice, two requirements have to be fulfilled in order to claim priority from an earlier application by filing “the same invention” as stipulated, eg, in Article 40(1) of the German Patent Act or in Article 87(1) of the European Patent Convention (EPC): (i) the invention including all of its features needs to be disclosed “directly and unambiguously” in the earlier application; and (ii) all features need to be disclosed “as belonging to the invention”, ie, as possible embodiments of the invention.

Both the Enlarged Board of Appeal (EBA) of the European Patent Office and the FCJ for Germany have repeatedly emphasised that the concept of direct and unambiguous disclosure is the same for a) the state of the art and its impact on patentability; b) the requirements for validly claiming priority or for filing divisional applications; and c) the right to amend the application, cf, eg, G 2/10 of the EBA at item 4.6 and FCJ in its decisions Elektronische Funktionseinheit, Olanzapin and Fälschungssicheres Dokument. Now, in UV-unempfindliche Druckplatte, the FCJ questions this uniformity.

Background

The case at hand relates to an action for revocation filed against the German part of a European patent (EP 823 327 B1, “the patent”) claiming UV-insensitive printing plates. The claimed plates do not require special handling conditions, such as yellow light. The action was inter alia based on a lack of novelty argument: WO97/39894 (D1) was filed prior to the filing date of the patent but after the priority date of the patent.

However, D1 itself claimed priority from UK applications filed earlier than the priority of the patent. Therefore, if the priority in D1 was valid, D1 could be used to contest the novelty of the patent pursuant to Articles 54(3) and 89 and Rule 165 EPC. D1 in particular describes the feature of the printing plates being UV-insensitive.

Consequently, the main question at issue was whether the priority claim in D1 was valid.

The priority applications of D1 disclose all of the working examples also contained in D1. In other words, all printing plates described in the priority applications are insensitive to UV radiation. Interestingly, however, this characteristic of the plates was expressly described and claimed for the first time in D1 and not in the priority applications.

The FCJ found that although the UV insensitivity characteristic was “attached to” the worked examples (as an inherent property of the products), the feature was neither explicitly nor implicitly disclosed in a direct and unambiguous manner.

The FCJ did not even need to base its decision on the additional requirement of the feature being disclosed as belonging to the invention (which the FCJ also denied). The feature was just not disclosed as such.

“THE FCJ MAKES CLEAR THAT THE DISCLOSURE WITH REGARD TO THE STATE OF THE ART AND ITS IMPACT ON PATENTABILITY IS TO BE UNDERSTOOD MORE BROADLY.”

Nevertheless, the FCJ also indicates that in the hypothetical case that the priority documents were to be considered prior art, the worked examples were very likely to be novelty-destroying to the patent in suit. When reading the decision, it appears as if the FCJ intensely tried to avoid saying that the inherent UV insensitivity characteristic of the working examples “disclosed” said feature.

However, the decisions referred to by the FCJ in order to demonstrate that intrinsic properties of a product can be novelty-destroying clearly show that intrinsic/inherent properties of a product disclose this property, cf. FCJ decisions in Terephthalsäure, Etikettiermaschine and Leflunomid.

The FCJ decision

The FCJ makes clear that the disclosure with regard to the state of the art and its impact on patentability is to be understood more broadly than when it comes to situations in which the applicant/proprietor needs to rely on its own earlier disclosure, ie, for validly claiming priority and, presumably, for filing divisional applications and for the right to amend the application.

How does the EPO apply the disclosure requirements?

The question of whether D1 validly claimed priority from the earlier UK applications was also an issue in opposition appeal proceedings at the EPO (T 888/02). There, the Board of Appeal similarly drew the conclusion that the claimed UV insensitivity feature was not “directly and unambiguously” disclosed in the earlier applications and that, therefore, the priority claim in D1 was not valid.

Nevertheless, the EPO also considers intrinsic characteristics of a known product to be part of the disclosure of the state of the art, if direct and unambiguous access to such information is possible by means of known analytical techniques which were available for use by a skilled person before the relevant filing date, cf. G 1/92, T 952/92, confirmed in T 510/10. This leads to situations in which the disclosure is insufficient to claim priority from it, but sufficient for it to be novelty-destroying, cf. decision T 832/04, Reasons for the Decision, item 4.

A potential trap

The decision in UV-unempfindliche Druckplatte demonstrates that the alleged uniform concept of disclosure of the invention might turn out to be a trap for the applicant. The decision also highlights the importance of (original) disclosure in Germany and Europe.

The consequence for applicants not paying attention to the strict requirements could be the following: a life science company in Germany develops a product with characteristics that are superior to those in the prior art. Following the filing of the national patent application, the company publishes its results, say in a scientific journal. After 10 months a search report is provided indicating prior art anticipating the broad teaching of claim 1.

The applicant files a Patent Cooperation Treaty (PCT) application with—in light of the search report—an amended claim 1 that includes another feature of the product that is mandatory to all embodiments. If this feature should later be found not to be directly and unambiguously disclosed in the national application, patents derived from the PCT application are not only not entitled to the priority date, but the applicant’s own publication in the scientific journal is novelty-destroying to them.

Wolfgang Bublak is a partner in the Munich office of Bardehle Pagenberg. He can be contacted at: bublak@bardehle.de

Axel Berger is a patent attorney in the Munich office of Bardehle Pagenberg. He can be contacted at: axel.berger@bardehle.de