This case concerning Nespresso coffee machines and their capsules highlights the potential negative impact that a published priority application can have on a patent claiming priority from that application, in circumstances where the claim scope has been broadened between the priority and filing dates.
Nestec alleged that Dualit infringed European Patent (UK) No. 2103236 (“the Patent”) by supplying coffee capsules which are compatible with Nestec’s Nespresso coffee machines. Dualit denied infringement and counterclaimed for revocation. This bulletin deals solely with a portion of the revocation action. The infringement part of the decision is discussed in our previous bulletin.
The Patent claims priority from European Patent Application No. 03015776, which was subsequently published. Dualit argued that the claims of the Patent are not entitled to priority as the claims of the Patent cover housing arrangements and capsule orientations not disclosed in the Priority Document. Nestec contended that claim 1 is entitled to partial priority.
With regard to the issue of partial priority Arnold J cited Kitchin J in Novartis AG v Johnson & Johnson Medical Ltd  EWHC 1671 (Pat) at  as follows:
“I discern from this passage [from G2/98] that the EPO considers it is permissible to afford different priority dates to different parts of a patent claim where those parts represent a limited number of clearly defined alternative subject-matters and those alternative subject-matters have been disclosed (and are enabled) by different priority documents. Further, this principle applies even if the claim has adopted a generic term to describe and encompass those alternatives.”
– Novartis AG v Johnson & Johnson Medical Ltd
Arnold J did not consider the arrangements covered by claim 1 but not in the priority document to be clearly defined alternatives to the other arrangements covered by claim 1. He therefore found claim 1 and, consequently, the remaining claims to lack entitlement to priority.
A consequence of the claims of the Patent not being entitled to priority and the Priority Document having published is that the Priority Document itself becomes prior art against the Patent pursuant to section 2(3) of the Patents Act 1977 (corresponding to Article 54(3) EPC) i.e. an application with an earlier priority date, but published after the effective date of the application in question that is citable for novelty purposes. Nestec did not dispute that the Priority Document disclosed arrangements having all the features of the relevant claims. Arnold J found that as the claims are broader than the disclosure of the Priority Document they can, and in this case do, lack novelty over the disclosure of the Priority Document even though they are not entitled to priority from it.
Arnold J’s narrow interpretation of the possibility of partial priority is controversial, particularly in view of recent case law from the European Patent Office (see decision T 1222/11) where an arguably more pragmatic interpretation of the law has been proposed. Even if this decision is upheld, there are steps that can be taken to reduce the likelihood of any potential “poisonous priority” issues. For those cases already filed, one potential escape route is to amend the general claim to disclaim the subject matter from the priority application (thus removing the subject matter deprived of novelty) and include that subject matter as a separate claim (which claim should be entitled to priority). The overall scope of the two separate claims should be the same.
When preparing new applications, ideally the application content should not be amended between the priority and subsequent filing. Certainly, there is a clear advantage in drafting claims designed to encompass the inventive concept as broadly as possible in the priority application. If new data is added to the subsequent filing, the content of the priority application should be retained to provide basis for claims clearly entitled to priority. Where the claims are generalised between the priority and subsequent filings to produce a generic claim, claims entitled to priority should be retained and a claim to the generic minus the specific disclosure of the priority application also included. In some situations it could be worth considering preventing separate publication of the priority application.
It seems likely that this issue and the related issues concerning divisional applications will be considered by the higher courts both in the UK and at the European Patent Office.