EPO Practice

A recent decision in the United Kingdom suggests that the strict priority approach applied in the European Patent Office (EPO) Boards of Appeal will also be enforced in that jurisdiction against patentees relying on the filing dates of earlier applications. The Court of Appeal in Hospira UK Generics Ltd. v. Novartis AG, [2013] EWCA Civ. 1663 (Dec. 19, 2013), held that a claim directed to use of a specific compound to treat osteoporosis at a certain dosage was not entitled to the earlier priority date of a U.S. patent application, notwithstanding that all the claim elements appear to be disclosed in the U.S. application, when read as a whole.

UK Priority Law

Applicants may benefit from the filing date of a foreign application under the terms of the Paris Convention for the Protection of Industrial Property. In the United Kingdom, Section 5 of the Patents Act 1977 (PA 1977) provides for reliance on an earlier priority date. The corresponding provision of the European Patent Convention (EPC) is Article 87(1). While Section 5 PA 1977 uses different language from Article 87 EPC, the Court of Appeal has held that the UK statute and the EPC article mean the same thing.1

Article 87(1) EPC governs priority in this context, stating that

[a]ny person who has duly filed, in or for . . . any State party to the Paris Convention . . . , an application for a patent . . . shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application (emphases added).

Thus, under Article 87(1) EPC, an applicant's claim will benefit from a right of priority of an earlier application if for the "same invention." See id. Importantly, this has been interpreted by the Enlarged Board in G02/98 to mean that priority is effective "only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole."2 This standard requires, at minimum, that all elements from the claim be disclosed, explicitly or implicitly, in the earlier application. See id.

The UK courts have also recognized the significance of G02/98, finding its approach not inconsistent with leading UK decisional law on priority.3 On the one hand, in Pharmacia Corp. v. Merck & Co., [2002] R.P.C. 41, priority was lost by narrowing down from the disclosure of the priority document so...