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J. Schmidtchen
TABLE OF CONTENT Partner of Blumbach-Kramer & Partner GbR in Munich I. Introduction The requirements for validly claiming a priority are a very important issue of the patent laws in nowadays practice, in particular for companies active in international markets and filing patent applications in foreign countries. Therefore, this topic has a very broad relevance. The novelty of broad ranges of numerical values and their sub-ranges and intermediate values on the other hand, is a very specific issue of the patent laws. Therefore, this topic as such does not have the same broad relevance. Accordingly, at the first sight, it might be astonishing why these two topics, the requirements of claiming priority of the same invention on the one hand side and the novelty of broad ranges of numerical values and their sub-ranges and intermediate values on the other hand side, are discussed at the same time. However, 'as the following discussion will show, the requirements for claiming the priority of the same invention are based on the requirements for original disclosure which essentially correspond to the requirements of disclosure for determining the novelty such that the two topics have a close relationship. In particular, if there are differences between the EPO and Germany concerning these topics, these differences might have significant consequences for foreign applicants and the foreign applicants should be aware of the same. The recent case law of the Enlarged Board of Appeal of the European Patent Office (EPO) and of the German Federal Supreme Court (Bundesgerichtshof = BGH) relating to the requirements for validly claiming a priority and to the novelty of ranges of numerical values and their sub-ranges and intermediate values brought about a positive clarification of the requirements for validly claiming a priority and confirmed the significant differences concerning the novelty (or original disclosure) of ranges of numerical values and their sub-ranges and intermediate values between the EPO and Germany. Therefore, at first the requirements for claiming priority of the same invention and then the basics of novelty or original disclosure of ranges of numerical values and their sub-ranges and intermediate values are discussed separately and then the interaction of the two issues and the consequences for the practise are discussed. II. Claiming priority of the same invention 1. European Patent Office Recently, the Enlarged Board of Appeal of the EPO gave its opinion on the "requirement for claiming priority of the same invention" in the Opinion G2/98 (published in the Official Journal of the EPO 2001 , pp. 413 et seq.). Before the Opinion G2/98, the case law of the Boards of Appeal of the EPO included basically two approaches concerning the requirement for validly claiming the priority of the same invention of a prior application, namely that
2. Germany The German Federal Supreme Court (BGH), which is the highest court in Germany for patent matters, recently released a decision ("Luftverteiler" = Air Diffuser, Mitteilung der Deutschen Patentanwalte 2001 , pp. 550 et seq.) concerning the "requirement of claiming priority of the same invention". Before the Decision "Luftverteiler", there was different case law of the German Federal Patent Court (Bundespatentgericht = BPatG) in that
In the Decision "Luftverteiler", the German Federal Supreme Court clearly decided that features in the same claim have to have the same priority (unitary priority). In the official head note of the decision as well as in the reasons, the German Federal Supreme Court explicitly referred to the Opinion G2/98 of the Enlarged Board of Appeal of the EPO and explicitly stated that the requirement for claiming the priority of the same invention is the same in Germany and at the EPO, namely that the subject matter has to be derivable directly and unambiguously from the previous application. 3. Conclusion Accordingly, since the case law of the EPO and of the German Federal Supreme Court concerning the requirement for claiming priority of the same invention are identical, namely that the subject matter claiming priority of the same invention has to be derivable directly and unambiguously from the previous application, there are no fundamental differences between the EPO and Germany if the conditions for deriving directly and unambiguously the subject matter from the previous application are the same. However, as will be discussed later, they are not always the same. III. Novelty of ranges of numerical values and their sub-ranges and intermediate values 1. European Patent Office The case law of the European Patent Office allows so-called selection inventions directed to the selection of a sub-range of numerical values from a broader range, the novelty of such a so-called selection invention is acknowledged in the case law of the EPO, when each of the following criteria is satisfied:
In the Opinion G2/98, the Enlarged Board of Appeal gave in point 8.4 of the reasons an "obiter dictum" (comment on a subject which is not part of the case to be decided) concerning the so-called selection inventions. There, the Enlarged Board of Appeal stated that "otherwise, patent protection for selection inventions, in particular in the field of chemistry, could be seriously prejudiced if these criteria were not thoroughly complied with when assessing priority claims in respect of selection inventions." The Enlarged Board of Appeal defined the so-called selection inventions in the "obiter dictum" as being typically, beside others, "the choice of ... sub-ranges from broader ranges of numerical values ... . '' Accordingly, the Enlarged Board of Appeal of the EPO is obviously of the opinion that so-called selection inventions comply with the European Patent Convention. Therefore, although the Enlarged Board of Appeal of the EPO did not give its opinion on so-called selection inventions in a specific case, it is very likely that the Enlarged Board of Appeal would confirm the EPO practise of the selection inventions, if the corresponding issue will be brought to the Enlarged Board of Appeal in the future. Accordingly, it has to be expected that the EPO practise of so-called selection inventions will not change in the future. Furthermore, the EPO has always been very restrictive with respect to the disclosure of sub-ranges or intermediate values by the disclosure of broader ranges of numerical values for the purpose of amending the claims. This restrictive EPO practice is implicitly confirmed by this "obiter dictum" as well. That means that in the practise of the EPO
2. Germany The German Federal Supreme Court developed, starting with the Decision "Crackkatalysator" in 1 990, the German case law concerning the question of original disclosure and/ or novelty of sub-ranges and intermediate values of broad ranges of numerical values as follows. In the Decision "Crackkatalysator" (GRUR 1990, pp. 510 et seq.) it was decided that the original disclosure of the range (in the decided case "up to 50 ppm") discloses all possible values within the indicated limits (in the decided case as well an upper limit of "less than 10 ppm"), if it is not described explicitly to the contrary. The corresponding case law concerning the disclosure of intermediate values was explicitly confirmed in the Decision "Chrom-Nickel-Legierung" (GRUR 1992, pp. 842 et seq.). Since the requirement of original disclosure for the purpose of amending an application is inevitably applicable to the question of original disclosure for the purpose of determining the novelty of a later application with respect to the prior art, it is clear that the corresponding case law prohibits so-called selection inventions in Germany in that it is not possible to acknowledge the novelty of sub-ranges or intermediate values selected from a broad range of numerical values disclosed in the prior art. This conclusion was explicitly confirmed in the Decision "Inkrustierungsinhibitoren" of the German Federal Supreme Court (GRUR 2000, pp. 591 et seq.) where the corresponding case law was confirmed explicitly as being contrary to the case law of the EPO. Please note, that this case law relates to numerical values and not to chemical compounds! The Opinion G2/98 of the EPO is dated May 31 , 2001 . The members of the Enlarged Board of Appeal and the judges of the corresponding chamber of the German Federal Supreme Court are in close contact and exchange information very fast. The German Federal Supreme Court confirmed its above discussed case law concerning the original disclosure and/or novelty of broad ranges and sub-ranges of numerical values and intermediate values again in a decision ("Filtereinheit", Mitteilung der Deutschen Patentanwalte 2002, page 1 6) dated July 26, 2001, i.e. knowing the positive obiter dictum of the Enlarged Board of Appeal. Accordingly, it can not be expected that the corresponding German case law will be changed. Accordingly, in Germany, unlike the practise of the EPO,
IV. Practical Consequences 1. General remarks From the above, it is clear that the "formal" requirements for claiming priority of the same invention are identical at the EPO and in Germany, namely that the corresponding subject matter claiming priority of the same invention has to be derivable directly and unambiguously from the (single) previous application. However, as it is clear from the discussion of different approaches of the novelty of ranges of numerical values and their sub-ranges and intermediate values, the practise and case law at the EPO and in Germany are quite different with respect to the conditions when a subject matter is derivable directly and unambiguously from a previous application or the same application or a prior art document. The practise of the European Patent Office concerning the question, when and how a subject matter is disclosed directly and unambiguously, is very restrictive in general. This very restrictive practise makes the so-called selection invention possible. In Germany, the practise concerning the question when and how a subject matter is derivable directly and unambiguously, is not so restrictive in comparison to the EPO. This is reflected, for example, in the approach that the indication of a range of numerical values discloses all and every sub-range and intermediate values of this range. Theses different approaches to the question when a subject matter is directly and unambiguously disclosed in a priority application, a patent application or a prior art document, result in significant differences in the practise of claiming priorities and the relevance of prior art. 2. Claiming priority at the EPO The EPO requires for validly claiming the priority of the same invention that the claimed subject matter is derivable directly and unambiguously from the disclosure of the previous (i.e. a single) application (priority application). Specifically, with respect to the disclosure of specific numerical values or ranges of numerical values, the same have to be explicitly disclosed in the previous application. Otherwise, the requirement for claiming the priority of the same invention is not fulfilled. For example, if the priority application (first application) discloses the content of element A to be in the range from 0.0080 to 0.0280 (ppm) (=broad range of numerical values) and preferably in the range from 0.0080 to 0.0140 (ppm) and examples of 0.0080, 0.0085, 0.0100, 0.0110, 0.0135, 0.0140, 0.0145, 0.0180, 0.0260, and 0.0280 and comparative examples of 0.0070 and 0.0290 (ppm), respectively, and describes characteristic I in relation to the content of A but not characteristic 2 (refer to the attached graph), it is not possible to claim the priority for the ranges from 0.0120 to 0.0260 or from 0.0200 to 0.0220 (ppm) because they were not explicitly disclosed. Accordingly, it is necessary to explicitly disclose in a first application that all and every sub-ranges and intermediate values should be covered in order to be able to establish a priority right for the application at the EPO. We do not know case law stating that a general statement of this type is sufficient, but it is definitely worth a try. 3. Claiming priority at the GPTO The GPTO requires in the same way as the EPO for validly claiming the priority of the same invention that the claimed subject matter is derivable directly and unambiguously from the disclosure of the previous (i.e. single) application (priority application). With respect to the disclosure of specific numerical values or ranges of numerical values, however, the same do not have to be explicitly disclosed in the previous application but it is sufficient if a range of numerical values covering the same is disclosed in the previous application. This is, contrary to the practise at the EPO, sufficient for the requirement for claiming the priority of the same invention. In the above example, if the priority application (first application) discloses the content of element A to be in the range from 0.0080 to 0.0280 (ppm) (=broad range of numerical values) and preferably in the range from 0.0080 to 0.0140 (ppm) and examples of 0.0080, 0.0085, 0.0100, 0.0110, 0.0135, 0.0140, 0.0145, 0.0180, 0.0260, and 0.0280 and comparative examples of 0.0070 and 0.0290 (ppm), respectively, and describes characteristic I in relation to the content of A but not characteristic 2 (refer to the attached graph), it is possible to claim the priority for the ranges from 0.0120 to 0.0260 or from 0.0200 to 0.0220 (ppm) because they are considered to be explicitly disclosed, although characteristic 2 is not described in the first application. 4. Relevance of prior art disclosing broad ranges of numerical values at the EPO As explained above with respect to the concept of the selection invention, prior art documents disclosing a broad range of numerical values is not considered to disclose all and every sub-range and/or intermediate value under specific conditions. If the conditions listed in 111 1. (i) to (iii) are fulfilled, the broad range of numerical value does not disclose the sub-range and/or intermediate value. Accordingly, a so-called selection invention is possible. Using again the above example, the prior art document discloses the content of element A to be in the range from 0.0080 to 0.0280 (ppm) (=broad range of numerical values) and preferably in the range from 0.0080 to 0.0140 (ppm) and examples of 0.0080, 0.0085, 0.0100, 0.0110, 0.0135, 0.0140, 0.0145, 0.0180, 0.0260, and 0.0280 and comparative examples of 0.0070 and 0.0290 (ppm), respectively, and describes characteristic I in relation to the content of A but not characteristic 2 (refer to the attached graph). Furthermore, the second application, discloses the content of element A to be in the range from 0.0120 to 0.0260 (ppm) and preferably in the range from 0.0200 to 0.0220 (ppm) and describes characteristic 2 in relation to the content of A (refer to the attached graph) . Then, applying the conditions described above in item 111 1 . (i) to (iii) the range from 0.0200 to 0.0220 (ppm) is considered to be novel and a European patent on a so-called selection invention may be granted. Please note, that the range from 0.0120 to 0.0260 (ppm) is not considered to be novel, because the conditions described above in item 111 1 . (i) and (ii) are not fulfilled. 5. Relevance of prior art disclosing broad ranges of numerical values in Germany In Germany, a prior art document disclosing a broad range of numerical values is considered to disclose all and every sub-range and/or intermediate values of the broad range of numerical values. Accordingly, the so-called selection invention with respect to the selection of sub-ranges of numerical values and/ or intermediate values is not possible. This has severe consequences if a European patent application directed to a selection invention is granted with effect for Germany. The corresponding claims are invalid, although the European Patent Office granted the patent. A nullity suit before the German Federal Patent Court will definitely result in the revocation of the corresponding patent, as far as the novelty of the invention is based on the concept of the selection invention relating to sub-ranges of numerical values and/or intermediate values from a known broad range of numerical values. Using again the above example, the European patent possibly granted on the selection invention directed to the content of the element A in the range from 0.0200 to 0.0220 (ppm), is invalid in Germany, because the range from 0.0200 to 0.0220 (ppm) is not novel in view of the disclosure of 0.0080 to 0.0280 in the prior art document. It is important to understand that there is a significant number of EP patents granted with effect for Germany having a corresponding critical defect because the applicants do not know this severe trap. 6. Practical advices With respect to first Japanese applications which could be a priority application for a patent application to be filed at the EPO, it is important to make clear that all and every sub-range and/or intermediate value of broad ranges of numerical values should be disclosed for the purpose of claiming priority and/or amending the application. There is no case law, whether a general indication is sufficient but it is definitely worth a try. If an EP application designating Germany is directed to a selection invention in the course of the application proceedings, it is important to have in mind that in case of a selection invention from a broad range of previously disclosed numerical values, the same is invalid in Germany.  |
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