T 132/90 – Schizo Prio

Some colleagues preparing for the EQE have questioned me about this decision, which I did not know (although it is reported here in the Case Law Book). As the underlying case is somewhat exotic, I thought it would be a perfect weekend post.

NB: All the passages cited below are translations of the German originals.

One of the key points of this case concerns a claim to the priority of a Swiss application filed on March 11, 1983. The European application claiming its priority had been filed on March 9, 1984.

Claim 1 of the patent as granted read

1. Projecting plate connection member for the insulated, non-positive connection to a projecting plate, with a parallelepipedic insulating member (2) and reinforcing rods passing through the same, characterised in that the reinforcing rods (3-6) are constructed as closed loops in a vertical plane, which are interconnected by transverse rods (7-14) running approximately parallel to the parallelepipedic insulating member (2) and in that the upper and lower parts of each loop (3-6) are interconnected by means of a clip (39).

The patent was opposed by another Swiss company. During the opposition proceedings, the patent proprietor initiated infringement proceedings against the opponent, which led the latter to examine the priority very closely. In a letter dated April 14, 1988, the opponent made the following statement:

“… It has turned out that the original Swiss application was filed on March 11, 1983. As new parts have been added, in particular Figures 6 and 7 and the corresponding description, the Swiss date of filing was shifted to July 1, 1983. As far as the European patent is concerned, this means that these new parts do not have the priority of March 11, 1983 but that the effective date (Stichtag) for the prior art for those figures 6 and 7 is March 9, 1984 because, as stated on the cover sheet of the European patent specification 0 119 165 only the priority of March 11, 1983 has been claimed. In this context [the opponent] refers to A 88(3) according to which the right of priority shall cover only those elements of the European patent application which are included in the application or applications whose priority is claimed. Annex 3 corresponds to the order concerning the shift of the date of filing of the patent application from March 11, 1983 to July 1, 1983, as well as the original office copy, where it is stated that this is above all relevant for the subject-matter of claim 3, i.e. the clips 39. As the clips, i.e. above all figure 6 and the corresponding description, which correspond to one of the features of claim 1 of the opposed European patent, do not benefit from the priority and, therefore, the corresponding effective date for the prior art is March 9, 1984, and as the attorney of the applicant has explained in his writ of July 21, 1987 […] that Egco AG has produced projecting plate connection members according to the invention since June 1983 […] and as it has to be assumed that either the members or at least leaflets comprising a complete description have circulated before March 9, 1984, i.e. within nine months from the start of production, this feature is most certainly deprived of novelty. …”

On February 22, 1989, the OD explained its point of view:

“… The present patent […] claims the priority of a prior Swiss application dated March 11, 1983. In view of the fact that the subject-matter of a claim that has been amended in the course of the proceedings was not disclosed in the original documents as filed, the Intellectual Property Agency has shifted the date of filing to July 1, 1983, after approval by the applicant.

Regarding the disclosure of [the elements] contained in the original application dated March 11, 1983, [the OD] acts upon the assumption that this date is to be considered as the date of the first application within the meaning of A 87.

The requirements of A 87(4) are not complied when the date of filing is shifted; the situation does not correspond to the case where a previous application has been withdrawn, abandoned or refused.

In the present case, even an application of Article 4C, paragraph 4 CPU on A 87(4) would not lead to the conclusion that July 1, 1983 could be considered to be the date of the first application in view of the disclosure [of the elements] contained in the original application dated July 11, 1983.

One requirements for considering a subsequent application to be the first application, pursuant to A 87(4), is that the previous application has not served as a basis for claiming a right of priority already. However, this is the case here because the European patent claims the priority of March 11, 1983.

As far as the present patent is concerned, this means: Insofar as the patent, and in particular, claim 1, claims an invention consisting in a combination of features at least one of which had not been disclosed on March 11, 1983 but only at a later time, the European patent, from a substantive point of view, cannot claim the priority of March 11, 1983 or July 1, 1983 because the priority of a claimed embodiment of an invention can only be unitary. A 88(2) only allows claiming of multiple priorities only if and to the extent that an application or a claim encompasses several embodiments of an invention (each of which as such is complete).

In the present case, this means that the date of filing is considered to be relevant for the assessment of the prior art. …”

In his response dated August 22, 1989, the patent proprietor argued as follows:

“… The communication dated February 22, 1989, correctly states that regarding the disclosure of [the elements] contained in the original application dated March 11, 1983, this date is to be considered as the date of the first application within the meaning of A 87. The claimed priority of the Swiss prior application n° 1361/83 dated March 11, 1983, is based on a regular filing under the national law of the state of filing (A 87(2)).

The application that had been filed at that date was sufficient for allocating a date of filing. Whether this application was withdrawn, abandoned or refused. A 87(3) expressly states: “… whatever may be the outcome of the application”.

Moreover, A 87(4) contains a cumulative clause dealing with the cases where there were several previous applications concerning the same subject-matter. This is not the case here. A mere amendment of the application documents of the first application cannot be considered to be a previous application. Such an interpretation would be arbitrary and would clearly be in conflict with A 87(3).

The right of priority shall cover only those elements which were already included in the application whose priority is claimed (A 88(3)). In the present case this holds true for all the features, with the exception of the clips 39.

Therefore it has to be examined whether the opposed patent, considering the disclosure [of the elements] contained in the document dated March 11, 1983, on which the priority claim is based, amounts to a patentable invention and whether the clips, which were known at the date of filing of the European application, are essential to the invention or merely constitute an overdetermination (Überbestimmung). If the answer to both questions is yes, then the patent has to be maintained as granted and the opposition has to be dismissed. …”

The OD maintained its position and revoked the patent because there had been public disclosures between July 1, 1983 and Marc 9, 1984.

In his statement of grounds of appeal, the patent proprietor changed his argumentation and pled that July 1 was the priority date to be taken into account.

“… We are of the opinion that there was only one application bearing reference n° 1361/83-8 and that its date of filing was July 1, 1983.

The priority of this reference has been claimed. The date of filing has been corrected by the Agency. This correction was carried out at a time where the European application had already been filed and the priority had been claimed and expired. Therefore, the applicant has claimed the correct priority, based on the data and information at his disposal, and the reference is still correct today. Therefore, the public has not been misled. The opponent has found out without any difficulties that the Swiss patent n° 652 160, which has been granted on the basis of the application the priority of which is claimed that the date of filing was July 1, 1983.

Therefore, when a change of date has been carried out, one has to act on the assumption that there has been no application dated March 11, 1983. Therefore, only the priority of July 1, 1983, has been claimed. The only problem arises from the fact that the date of filing was changed only at a very late stage, i.e. in 1985, by means of an order to this effect.

If the Federal Intellectual Property Agency had decided the shift of date immediately after the filing of the amended documents, then the March 11 date would not have been appeared at all and only the July 1 date would have been mentioned. Before the decision to shift the date had been taken, the applicant could not claim anything else than what he had claimed, i.e. the priority of a first filing bearing the reference n° 1361/83 …”

Here is how the Board handled this tricky problem:

[3.1] Document D7 explains that the possibility to shift the date serves the purpose of sparing the applicant the burden of having to file a new application in cases where the technical documents have to be completed. It may be left unanswered whether the shift of date is to be understood as a withdrawal of the original application combined with a new filing (see GRUR Int., 1972, 1, pages 23 and 25). What is decisive is that the shift of date has an ex nunc effect and that, therefore, the original application exists until the date of the shift. As, pursuant to A 87(3) the outcome of the application is irrelevant from the point of view of the right of priority, this application can, therefore, be the basis for claiming a right of priority and the original date of filing can be acknowledged as the priority date.

[3.2] The (original) application filed on March 11, 1983 before the Swiss Federal Intellectual Property Agency is a regular national application within the meaning of A 87(3) the priority of which had been regularly claimed according to the requirements of A 88(1) and R 38. As this application can be the basis for a right of priority […] it has to be acknowledged as such.

[3.3] As this priority has been regularly claimed, A 87(4) does not apply in this case. Therefore, the application as amended, which had given rise to the shift of the date of filing to July 1, 1983, could only have been the basis for claiming a right of priority insofar as it comprises features that had not been disclosed in the original application filed on March 11, 1983. However, the appellant has not claimed such a right of priority. Therefore, the application as amended is not to be considered any more.

[3.4] According to A 88(3) the right of priority covers only those elements of the European patent application which are included in the application or applications whose priority is claimed. Thus in the present case, the right of priority is delimited as to its content by the certified copy of the Swiss patent application 1361/93 filed pursuant to A 88(1), which bears the annotation “Date of application: 11.03.83” […].

I let you imagine how things would work out in the (admittedly somewhat unlikely) case where the priority document is a European patent application that has been redated upon filing of missing parts under R 56 after the filing of a subsequent application claiming its priority.

To download the whole decision (in German), click here.

The file wrapper can be found here.