On poisonous priority: taking the debate further

IPKat team blogger Darren's post on Nestec v Dualit ("Poisonous priority – how many ways can a patent be toxic?", here) attracted a large number of comments from European patent experts and enthusiasts, including several from Dutch and European patent attorney Walter Hart (EP&C). It was therefore a welcome pleasure to this Kat that Walter has chosen to enlarge on his comments via a separate, stand-alone guest post which he has written together with his colleague Reinier Wijnstra.

"In a recent decision in Great Britain in Nestle v Dualit, a European patent was held invalid over its own priority document. In our opinion, this decision goes against basic principles of the patent system.

The patent system is created to stimulate innovation. It does so on a quid pro quo principle. The inventor gives information on an invention to society, and society gives back an exclusive right for a limited period, a patent. If the invention is big, the patent is big. If the invention is small, the patent is small.

The essence of innovation is improvements. Improvements do not stop after a priority application is filed. In the priority year, another embodiment based on the exact same innovative concept may be found. The field of the invention may be broadened. Further, an inventor may find that a feature he initially considered essential and explained as such to his patent attorney, is non-essential after all. The inventor may develop a better understanding of the working of the invention without actually changing the embodiment. It is also possible that a different light is shed on the invention by the prior art mentioned in the search report of the priority application, resulting in better understanding of the invention.

Further, many innovators in particular SMEs, invent something, file an application and build a prototype. During the priority year the prototype may be further improved. These things and others may happen in the priority year.

When drafting the priority application, it is the job of the patent attorney to get the broadest protection and draft claim 1 accordingly. But as Niels Bohr already explained, prediction is very difficult, especially about the future. A patent attorney cannot predict future improvements of the invention. As a result of the improvements discussed above, the view on the invention may change somewhat. As a result, in order to get the full scope of protection, it can be necessary to amend claim 1. The required amendment is not always straightforward. Innovation is not always simple, and neither is the resulting required amendment of claim 1.

However, according to thie ruling in Nestec v Dualit, such an improvement and the corresponding amendment of claim 1 is very dangerous to the inventor, because it may result in a complete loss of the subsequent application which is filed at the end of the priority year.

It was already known that this could happen. That is why many patent attorneys often or always withdraw priority applications before publication, or file national priority applications instead of European priority applications. In other words, users withdraw rights or file lesser rights because of improvements or the mere possibility of improvements in the priority year. Our patent system punishes these improvements. You either withdraw the first right, file it in a lesser way, or loose the subsequent right.

This ruling is based on a very strict interpretation of the term ‘same invention’ and the corresponding EPO case law, in particular G2/98 and a strict application of Art 54(3) EPC. However, the only thing the inventor did was to improve the invention in the priority year. The subsequent application presents an improved invention to society. According to the quid pro quo principle via which the patent system stimulates innovation, an improvement should lead to more or perhaps better defined rights, not less rights.

Some may say: so what? Broadening of claim 1 is possible, you only need to withdraw the priority application. But improvements in the priority year occur quite often. Each time the patent attorney needs to make an assessment whether to amend claim 1, what the amendment would do with the priority and whether the priority application needs to be withdrawn. All this must be explained to the inventor, who mostly does not understand it. For the inventor, the situation is straightforward. He simply improved his invention. However, the legal consequences are very difficult. Moreover, withdrawing does not solve the problem of the loss of priority. So any disclosure of the invention will still kill the subsequent application.

We should ask the question: what is the damage to society if the priority application is published? The subsequent application is filed before publication, and both are usually published at the same time, so the public can see the correspondence and the differences between both. We cannot see any damage. Why punish this publication with capital punishment?

Further, foreigners who file European priority applications for the quality search of the EPO may also loose rights if not properly advised. In an ever converging world, what is the use of a “European Priority Punishment” ? Will non-Europeans understand it? It is a patent attorney’s paradise, but was that the intention of priority?

Some have argued that for any further improvement in the priority year, another independent patent family should be created. That solution may also be great for patent attorneys, but doubles the costs for SMEs. The patent system is not here only for Apple, Nestle and the likes, but also for a local inventor who invents a new mousetrap.

Moreover, it is not always possible to be novel relative to the priority application without losing scope of protection or without taking at least some risk that the priority application is considered novelty destroying for the subsequent application after all. This occurs in particular if the inventor’s understanding of his invention has progressed, i.e. if the improvement, new insight or redefinition of the invention is based on the same figures. Things can become very messy if you try to formulate a claim 1 that is novel over the figures of the priority application, but needs to be supported by the very same figures.

Further, many European countries have registration systems which result in a quick patent. Inventors use these national routes to get quick protection on home turf. A subsequent European patent is often filed which claims priority, and upon grant is validated in the same country. Some of these European patents will have priority problems. According to this decision, these patents will be invalid on home turf. Worse, European countries have provisions that prevent double patenting. As a result, the priority patent becomes unenforceable once the European patent is validated. The priority patent destroys the European patent and the European patent destroys the priority patent. Mutual assured destruction.

How would this situation play out in the future unitary system? It appears the unitary patent would be invalid as a whole over a published national priority application.

Was all this the intention when the priority system was created in 1883? We believe the intention was to create a priority system that helps the inventor, not hurts him. The subject of priority is complicated and we do not have all the answers. But this ruling is unjust. We need to rethink priority, and in particular the meaning of the words ‘same invention’. We need a priority system that does not hurt an inventor who improves his invention in the priority year, because our patent system is intended to stimulate these improvements".

Do you agree with Walter and Reinier? Do let us know!