Monday, 19 October 2009

T 382/07 - True Disclosure Found in the Priority Document

This (Kinkeldey) decision is very interesting on more than one account.

First, the decision deals with a provision of the Paris Convention (PC) that is hardly known at all : the possibility of claiming an exhibition priority (Article 11 PC). Such priorities are not recognized by the EPC, as explained in points 8 to 8.4 of the Reasons. Laurent Teyssèdre has discussed this aspect of the decision on his blog (in French).

But there is even more. Once the exposition priority is lost, document D5 becomes prior art under A 54(3) EPC, due to the date of filing of its priority document, D49.

The Board therefore has to consider the formal entitlement to priority (D49 having been filed by four natural persons, whereas D5 has been filed by only one of them; see point 9 of the Reasons).

Finally, the Board examines substantive entitlement to priority and finds a difference between the disclosures of D49 and D5 :

[…] In addition to the general description, document [D49] comprises eight examples. Example I of document [D49] literally recites, albeit in a different order, the five compositions for veterinary use of examples 1 and 2 of document D5, with the exception that in the composition corresponding to the first composition of Example 2 of document D5 the content of glycerine monostearate 5% according to document [D49], whereas it is 1% according to document D5.

With respect to this difference, in the board’s view the skilled person studying document D5 would recognise that, in contrast to the summed percentages for all the other relevant compositions, the sum of percentages for this one does not amount to 100 and that therefore the composition cannot be meant to read as such. The board considers that for establishing the intended percentages of ingredients and in the absence of indications in the patent document itself, the skilled person would compare the disclosure of the erroneous composition to the disclosure of the corresponding composition in the priority document, because the disclosure of a specific example, if there is a corresponding one, is highly unlikely to change between the priority and the later application. He/she would therefore conclude that the value of 1% should in fact read 5%.

The present board is aware of decision G 11/91 regarding the correction of errors in the disclosure of a patent application pursuant to R 88 EPC 1973. The Enlarged Board held in point 7 of the reasons that priority documents may not be used to establish what a skilled person would actually derive, on the date of filing, from the parts of a European patent application relating to the disclosure.

However, in the present board’s view, this decision is not applicable to the present case which is not related to the question of whether or not the correction of an error complies with the requirements of A 123(2) EPC but rather is concerned with establishing the true disclosure content of a patent application in the case of an obvious error for the purposes of A 54(3) EPC and for determining the validity of the claimed priority. As far as the determination of the disclosure content of a prior art document is concerned it has been held by the boards of appeal in several decisions that for the correction of an obvious error in such a document the skilled person may resort to readily accessible relevant external documents, for example to a corresponding US patent application in the case of an obvious error in a British patent application (T 412/91 [3.5]) or to the original document in the case of an obvious error in an abstract of that document (T 77/87 [4.1.4] and T 1080/99 [4.5-6]).

Therefore, the board concludes that, in effect, the relevant examples in document D5 and document D49a are identical. [10.2]

This decision is really worth reading. To do so, just click here.