AIPPI 2018 - Study Question - Conflicting Patent Applications

AIPPI 2018 - Study Question - Conflicting patent applications

Study Question

Submission date: May 2, 2018

Sarah MATHESON, Reporter General

Jonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters General

Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to the Reporter General

Conflicting patent applications

Responsible Reporter(s): Jonathan P. OSHA

National/Regional Group / United Kingdom
Contributors name(s) / Claire BALDOCK , Trevor COOK, Ed CRONIN, Matthew HOYLES, Mike JENNINGS, Oliver LAM, Rachel MUMBY, Michael NEWTON, Justin WATTS, Daniel WOOD
e-Mail contact /

For all of the questions:

a) secret prior art means an earlier-filed patent application that was published on or after the effective filing date of a later-filed patent application.

b) effective filing date means the earlier of: 1) the actual filing date of the application; and 2) the filing date of an application from which priority is claimed that provides adequate support for the subject matter at issue.

The standard for what constitutes adequate support is outside the scope of this Study Question.

I. Current law and practice

Please answer all the below questions in Part I on the basis of your Group's current law and practice.

1. For the purposes of this question, assume the applicant and inventors of the secret prior art and the applicant and inventors of the later-filed application are unrelated.

1.a. Is the secret prior art available against the claims of the later-filed application for novelty-defeating purposes?

Yes

Please Explain

Yes.[1],[2]

For an EP patent application, where the secret prior art is a national right, the secret prior art is relevant only for that designation. Where a national right of an earlier date exists in a contracting state designated in the application, there are several possibilities of amendment open to the applicant. First, he may simply withdraw that designation from his application for the contracting state of the national right of earlier date. Second, for that state, he may file claims which are different from the claims for the other designated states. Third, the applicant can limit his existing set of claims so that the national right of earlier date is no longer relevant[3]. This point is repeated below.

[1] s. 2(3) Patents Act 1977 (Save for the caveat expressed at 4(a) below whereby an application that is withdrawn, but still subsequently published by the UKIPO (due to error or insufficient notice), will not act as Secret Prior Art.)

[2] Art. 54(3) EPC

[3] EPO Guidelines, G-IV-6 (November 2017 Edition)

1.a.i. If YES, are the entire contents of the secret prior art available, or only a portion such as the claims?

Entire contents.

1.a.ii. If YES, what is the standard for evaluation of novelty? Is this the same as the standard applied to publicly available prior art?

The standard is the same as applied to publicly available prior art.

Under UK law, the standard for evaluation of novelty can be summarised as: secret prior art is novelty-destroying if it provides sufficient information for the invention to be reproduced from the total information content of that prior disclosure when this is received by the person skilled in the art and understood by him in the light of his common general knowledge at the time.[1]

Under EP law, a document takes away the novelty of any claimed subject-matter derivable directly and unambiguously from that document including any features implicit to a person skilled in the art in what is expressly mentioned in the document.[2]

[1] Commentary on Section 2,CIPA Guide to the Patents Acts

[2] EPO Guidelines, G-VI-2 (November 2017 Edition)

1.b. Is the secret prior art available against the claims of the later-filed application to show lack of inventive step / obviousness?

Please Explain

1.b.i. If YES, are the entire contents of the secret prior art available, or only a portion such as the claims?

1.b.ii. If YES, can the secret prior art be combined with another prior art reference to show lack of inventive step / obviousness? * * The standard for combination of prior art is outside the scope of this Study Question. This question seeks to determine only if such a combination is possible in the scenario presented.

1.b.iii. If YES, is the standard for evaluation of lack of inventive step / obviousness the same as the standard applied to publicly available prior art?

1.c. If the secret prior art is an international application filed designating your jurisdiction:

1.c.i. Does this change any of your answers to questions 1(a) and 1(b) above? If YES, please explain.

Yes

Please Explain

For UK patent applications, only the following applications may be relied on as secret prior art:

UK applications which have been published;

International applications for patents designating the UK, published by WIPO which have entered the UK national phase;

applications for European patents (UK) published by the EPO; and

International applications for European patents (UK) published by WIPO which have entered the European regional phase (i.e. the relevant fee has been paid and if the application is in a language other than English, French or German a translation into one of these languages has been filed at the European Patent Office).[1]

For EP patent applications, the following applications may be relied on as secret prior art:

applications for European patents published by the EPO and designating any EPC countries; and

International applications for European patents published by WIPO which have entered the European regional phase (i.e. the relevant fee has been paid and if the application is in a language other than English, French or German a translation into one of these languages has been filed at the European Patent Office).

To repeat the point made at 1(a), above: For an EP patent application, where the secret prior art is a national right, the secret prior art is relevant only for that designation. That is, where a national right of an earlier date exists in a contracting state designated in the application, there are several possibilities of amendment open to the applicant. First, he may simply withdraw that designation from his application for the contracting state of the national right of earlier date. Second, for that state, he may file claims which are different from the claims for the other designated states. Third, the applicant can limit his existing set of claims so that the national right of earlier date is no longer relevant[2].

[1] Commentary on Section 2, CIPA Guide to the Patents Acts

[2] EPO Guidelines, G-IV-6 (November 2017 Edition)

1.c.ii. Does it matter whether the international application actually enters the national phase in your jurisdiction? If YES, please explain.

Yes

Please Explain

The answer to (1)(c)(i), above, is repeated here in its entirety.

For UK patent applications, only the following applications may be relied on as secret prior art:

UK applications which have been published;

International applications for patents designating the UK, published by WIPO which have entered the UK national phase;

applications for European patents (UK) published by the EPO; and

For EP patent applications, the following applications may be relied on as secret prior art:

applications for European patents published by the EPO and designating any EPC countries; and

[1] Commentary on Section 2, CIPA Guide to the Patents Acts

[2] EPO Guidelines, G-IV-6 (November 2017 Edition)

1.c.iii. Does the date from which the international application is available as secret prior art depend on the date of national phase entry in your jurisdiction?

Please Explain

2. For the purposes of this question, assume the applicant and inventors of the secret prior art and the applicant and inventors of the later-filed application are the same.

2.a. Is the secret prior art available against the claims of the later-filed application for novelty-defeating purposes?

Yes

Please Explain

The applicant and inventor of the secret prior art is irrelevant.[1],[2]

[1] s. 2(3) Patents Act 1977

[2] Art. 54(3) EPC

2.a.i. If YES, are the entire contents of the secret prior art available, or only a portion such as the claims?

Entire contents.

2.a.ii. If YES, what is the standard for evaluation of novelty? Is this the same as the standard applied to publicly available prior art?

The standard is the same as applied to publicly available prior art.

In the UK, the standard for evaluation of novelty can be summarised as: secret prior art is novelty-destroying if it provides sufficient information for the invention to be reproduced from the total information content of that prior disclosure when this is received by the person skilled in the art and understood by him in the light of his common general knowledge at the time.[1]

Before the EPO, a document takes away the novelty of any claimed subject-matter derivable directly and unambiguously from that document including any features implicit to a person skilled in the art in what is expressly mentioned in the document.[2]

[1] Commentary on Section 2, CIPA Guide to the Patents Acts

[2] EPO Guidelines, G-VI-2 (November 2017 Edition)

2.a.iii. If YES, is there any anti-self collision time period during which the secret prior art is not available against the claims of the later-filed application for novelty-defeating purposes? What should that time period be?

No.

2.b. Is the secret prior art available against the claims of the later-filed application to show lack of inventive step / obviousness?

Please Explain

2.b.i. If YES, are the entire contents of the secret prior art available, or only a portion such as the claims?

2.b.ii. If YES, can the secret prior art be combined with another prior art reference to show lack of inventive step / obviousness?

2.b.iii. If YES, is the standard for evaluation of lack of inventive step / obviousness the same as the standard applied to publicly available prior art?

2.b.iv. If YES, is there any anti-self collision time period during which the secret prior art is not available against the claims of the later-filed application for novelty-defeating purposes? What should that time period be?

2.b.v. If anti-self collision is applied, are there any additional restrictions to avoid double patenting (e.g., requiring common ownership, terminal disclaimer, litigating all patents together, etc.)?

2.c. If the secret prior art is an international application filed designating your jurisdiction:

2.c.i. Does this change any of your answers to questions 2(a) and 2(b) above? If YES, please explain.

Yes

Please Explain

The answer to (1)(c)(i) and (ii), above, is repeated here in its entirety.

For UK patent applications, only the following applications may be relied on as secret prior art:

UK applications which have been published;

International applications for patents designating the UK, published by WIPO which have entered the UK national phase;

applications for European patents (UK) published by the EPO; and

For EP patent applications, the following applications may be relied on as secret prior art:

applications for European patents published by the EPO and designating any EPC countries; and

[1] Commentary on Section 2, CIPA Guide to the Patents Acts

[2] EPO Guidelines, G-IV-6 (November 2017 Edition)

2.c.ii. Does it matter whether the international application actually enters the national phase in your jurisdiction? If YES, please explain.

Yes

Please Explain

The answer to (1)(c)(i) and (ii), and (2)(c)(i), above, is repeated here in its entirety.

For UK patent applications, only the following applications may be relied on as secret prior art:

UK applications which have been published;

International applications for patents designating the UK, published by WIPO which have entered the UK national phase;

applications for European patents (UK) published by the EPO; and

For EP patent applications, the following applications may be relied on as secret prior art:

applications for European patents published by the EPO and designating any EPC countries; and

[1] Commentary on Section 2, CIPA Guide to the Patents Acts

[2] EPO Guidelines, G-IV-6 (November 2017 Edition)

2.c.iii. Does the date from which the international application is available as secret prior art depend on the date of national phase entry in your jurisdiction?

Please Explain

3. Question 1 considered the situation where both the inventors and the applicant of the secret prior art and the later-filed application are unrelated. Question 2 considered the situation where both the inventors and the applicant of the secret prior art and the later-filed application are the same. For each of the following scenarios, please indicate whether your answers would be the same as those under Question 1, or those under Question 2. If your answers are different from your answers to both Question 1 and Question 2, please explain.

3.a. Same applicant on the dates of filing, one common inventor, one additional inventor on the later-filed application:

same as Question 2