INTERNAL REQUIREMENTS

AND PRIORITY

Phillip Johnson
DATE OF FILING AND
PRIORITY
Priority Date
• The priority date is either:
• The date of filing the application; or
• The date of filing of an earlier “priority” application.
• The priority date is the date upon which “novelty”, the
state of the art, is determined.
Priority Application: Treaty Obligations
• Paris Convention Article 4C:
• 12 months from the date of filing of the first application disclosing
the invention;
• Patent Law Treaty Article 13(2) and Rule 14(4)
• Not less than 2 months extra shall be provided by signatory states
where failure to fail was unintentional/where due care was
exercised (alternate standards)
[UK adopted 2 months and unintentional standard;
EPC adopted 2 months and due care]
 Priority Rules
If failure to file
unintentional
(UK))

Application may be
filed in UK
Priority date 1 Jan 2011

Jan 1, 2011 Jan 1, 2012 Mar 1, 2012

Paris Period PLT Period

Priority application
filed in US
Filed on 1 Jan 2011
Establishing priority
• Applicant must make a declaration, either at filing or within
16 months of earlier filing;
• Late declarations (in 2 month “extra period”) must be
made a time of filing;
• Must be supported by certified copy of original application
within 16 months of priority date.
Must be filed in a relevant country and
an invention
• The priority application must have been filed in a WTO
country OR a Paris Convention country.
• The priority application must be for an invention (it cannot
be for a design application).
Must be a first application; but can
regenerate priority
Consider what this means by way of an example. Suppose you file for patent protection in London on
the first working day of the year: January 2. Now you have a priority date of January 2. After nearly a
year has elapsed, you are not happy with your application. For example, you need more time to
perfect your invention, or to raise finance. You do not want your invention to be published by the
Patent Office, for then your competitors will get to know about it. Furthermore, if the Patent Office did
publish your invention, it might prejudice your chances of getting proper patent protection for your
idea later on – when you hope to have perfected your idea, or to have raised enough capital. You will
anyway need enough capital to finance your foreign filing campaign, since this is very expensive.
Anyway, you need to buy more time: you need a breathing space.
So, you decide to abandon your current application, without prejudice to your right to come back later.
On (say) December 31 you inform the British Patent Office accordingly. They act on your wishes.
Your patent application ceases to exist. It is never published. Your competitors do not get to know
about it, except for the fact that you had filed some sort of patent application. Now you can come
back anytime you like, for example the next day, and start all over again. You can claim a new priority
date – the date when you came back and filed again. You have your right under the Paris Convention
to establish your new priority date, provided you act within the 12 months, of course. Naturally, you
have run the risk that somebody else has come up with the same idea in the meantime, and applied
to patent it. But you may judge that the risk is small, and you may turn out to be right.
What I have just described happens all the time. Patent attorneys call it “regenerating your priority
date”. It is perfectly legitimate. Based on my experience, I would say that it must happen dozens of
times every week, if not hundreds.’
Haberman v Comptroller General of the Patent Office [2003] EWHC 430 (Pat)
Applicant or successor
• The person claiming priority must have been the applicant
for the earlier application or a successor in title:
• Must have assigned priority before filing the application in suit
T 577/11 Threaded Tube Joint/TENARIS CONNECTIONS (unpublished*) 14 April 2016
• Must have rights in the application (not merely the invention)
T 62/05 Polycarbonate resin composition/ GE PLASTICS (unpublished*) 14 November 2006
• Where the priority application was filed by a number of applicants
all need to consent to file the new application
T 788/05 Vascular catheter/TERUMO KABUSHIKI KAISHA (unpublished) 8 May 2007
Must be for “same invention”
• ‘‘It seems therefore, that a narrow or strict interpretation of the concept of “the same
invention” referred to in article 87(1) EPC, equating it with the concept of “the same
subject-matter” referred to in article 87(4) EPC … is perfectly consistent with
paragraphs 2 to 4 of article 88 EPC. Such a narrow or strict interpretation is also
consistent with article 87(4) EPC, which corresponds to article 4C(4) of the Paris
Convention and which provides that a subsequent application for the same subject-
matter as a previous first application shall be considered the first application for the
purposes of determining priority, provided that, at the date of filing the subsequent
application, the previous first application satisfies certain requirements; there is no
reason why in this particular situation the concept of “the same invention” should be
interpreted differently.
• The requirement for claiming priority of “the same invention”, referred to in article 87(1)
EPC, means that priority of a previous application in respect of a claim in a European
patent application in accordance with article 88 EPC is to be acknowledged 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.
G 2/98 Requirement for claiming priority of the ‘same invention’ [2001] OJ EPO 413
UK Approach
• ‘‘… the task for the court is therefore:
• (a) to read and understand, through the eyes of the
skilled person, the disclosure of the priority document as a
whole;
• (b) to determine the subject matter of the relevant
claim;
• (c) to decide whether, as a matter of substance not of
form, the subject matter of the claim can be derived
directly and unambiguously from the disclosure of the
priority document.”
Samsung Electronics v Apple Retail [2013] EWHC 467 (Pat)
Multiple and partial priority
• A Claim for A + B
• Cannot claim priority from priority application X for A; and a priority
application Y for B as neither disclose the combination;
• If A is disclosed in priority application Y; and A+B is disclosed in
priority application Z; priority can be claimed from Z;
• A Claim for A or B
• Priority can be claimed for A from application X; and for B from
application Y.

G 1/15 Partial Priority [2017] OJ EPO A82

Late filing: Meaning of unintentional
Unintentional means that the applicant had a continuing
underlying intention to do the thing.
Heatex Group Ltd’s Application [1995] RPC 546

An applicant who does not take the necessary steps to

comply with a deadline despite a warning from his patent
attorney and the Patent Office cannot claim that the failure
was unintentional.
Anning’s Patent Application [2007] EWHC 2770 (Pat)
SUFFICIENCY
The law
“The specification of an application shall disclose
the invention in a manner which is clear enough
and complete enough for the invention to be
performed by a person skilled in the art”
Patents Act 1977 s14(3)

The claim or claims must be supported by the

description
Patents Act 1977, s. 14(5)(c)
Eli Lilly & Co v Human Genome
Sciences Inc [2008] EWHC 1903 (Pat)
“The key elements of this requirement which bear on the present case are
these:
(i)the first step is to identify the invention and that is to be done by reading and
construing the claims;
(ii)in the case of a product claim that means making or otherwise obtaining the
product;
(iii)in the case of a process claim, it means working the process;
(iv)sufficiency of the disclosure must be assessed on the basis of the
specification as a whole including the description and the claims;
(v)the disclosure is aimed at the skilled person who may use his common
general knowledge to supplement the information contained in the specification;
(vi)the specification must be sufficient to allow the invention to be performed
over the whole scope of the claim;
(vii)the specification must be sufficient to allow the invention to be so performed
without undue burden."
Who is reading the specification?
“[It] requires the skilled man to be able to perform the
invention. Such a man is the ordinary addressee of the
patent. He must be assumed to be possessed of the
common general knowledge in the art and the necessary
skill and expertise to apply that knowledge. He is the man of
average skill and intelligence, but is not expected to be able
to exercise any invention…Further, in circumstances where
the art encompasses more than one technology, the
notional skilled person will be possessed of those
technologies which may mean that he will have the
knowledge of more than one person.”
Aldos J, Mentor Corp v Hollister [1991] FSR 557, 561

Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA

Civ 819 (the art might change by reason of the patent and so the skilled person
may be different)
Types of insufficiency
• (i) Classical insufficiency – the invention cannot be
performed without undue burden;
• (ii) Biogen insufficiency/excessive claim breadth – the
invention cannot be performed across the whole range
without undue burden (so can be performed in part)
• (iii) Insufficiency by uncertainty – the skilled person would
not know whether he or she is working the invention or not
When must the specification be
sufficient?
• Traditionally it had to be sufficient at the time of
publication (as that was when the disclose was made
available)
Standard’s Brand’ Patent [1981] RPC 499, 529
• This no longer good law, now it has to be sufficient at the
date of filing (as no matter can be added thereafter).
Biogen v Medeva [1997] RPC 1, 53
Degree of sufficiency
“It has never been the law that the claim must be co-existence with
embodiments specifically disclosed by the patentee in his
specification. Protection limited in this way would in all probability be
illusory”
Monsanto v Merck [2000] RPC 709, [61]

“in describing in what manner the invention is to be performed the

patentee does all that is necessary, if he makes it plain to persons
having reasonable skill in doing such things as have to be done in
order to work the patent, what they are to do in order to perform his
invention. If…they are to do something the like of which has never
been done before, he must tell them how to do it, if a reasonably
competent workman would not himself see how to do it on reading
the specification”
Edison and Swan Electric v Holland (1889) 6 RPC 243, 289
Trial and error
“Patent specifications need not set out every detail necessary for
performance, but can leave the skilled man to use his skill to perform
the invention. In so doing he must seek success. He should not be
required to carry out any prolonged research, enquiry or experiment.
He may need to carry out the ordinary methods of trial and error,
which involve no inventive step and generally are necessary in
applying the particular discovery to produce a practical result”
Mentor Corp v Hollister [1991] FSR 557, 561

“You must not give people mechanical problems and call them
specifications”
Plimpton v Malcolmson (1876) 32 Ch. D 531, 576
Correction of errors
“The test to be applied for the purposes of ascertaining whether a
man skilled in the art can readily correct the mistakes or readily
supply the omissions, has been stated to be this: Can he rectify the
mistakes and supply the omissions [without] the exercise of any
inventive faculty? If he can, then the description of the specification is
sufficient. If he cannot, the patent will be void for insufficiency”
Mentor Corp v Hollister [1993] RPC 7, 14

Stating an incorrect theory for why the invention works does not invalidate the
patent unless the theory makes the specification misleading.
Electric Lamp v Marples Leach (1910) 27 RPC 737

The English courts are now increasingly looking to apply the “undue burden”
test of the EPO: see for example Novartis v Johnson & Johnson [2010]
EWCA Civ 1039
Biogen/Excessive claim breadth
• Thus if the patent has hit upon a new product which has a beneficial effect
but cannot demonstrate that there is a common principle by which that effect
will be shared by other products of the same class, he will be entitled to a
patent for that product but not for the class, even though some may
subsequently turn out to have the same beneficial effect… other hand, if he
has disclosed a beneficial property which is common to the class, he will be
entitled to a patent for all products of that class (assuming them to be
new)even though he has not himself made more than one or two of them.’

“the specification must enable the invention to be performed to the full

extent of the monopoly claimed. “
Biogen v Medeva [1997] RPC 1, 48
Insufficient by uncertainty
• ‘If the court cannot ascertain the boundary, having used
all the interpretative tools at its disposal, it must conclude
that the specification does not disclose the invention
clearly enough and completely enough for it to be
performed by a person skilled in the art’.
Anan Kasei Co Ltd v Neo Chemicals and Oxides Ltd [2019] EWCA Civ 1646
Plausibility
• Where an invention is a second medical use (or similar), it is possible
to have so called “armchair” inventions – where someone says Drug
X treats Y. Without any evidence it does.
• The plausibility requirement is the “more” that must be given to get a
patent.
• Warner-Lambert Co LLC v Generics (UK) Ltd [2018] UKSC 56:
• “the specification must disclose some reason for supposing that the
implied assertion of efficacy in the claim is true”: Lord Sumption
• “there must be something that would cause the skilled person to
think that there was a reasonable prospect that the assertion would
prove to be true”: Lord Sumption
• Minority took this to mean that “prima facie’ evidence that the assertion
was true, which went too far.
Plausibility: EPO
• G 2/21 Plausibility (23 March 2023)
• “the conceptional notion inherent in the term 'plausibility', which is often
used as a generic catchword, as not being a distinct condition of
patentability and patent validity, but a criterion for the reliance on a
purported technical effect“
• Plausibility is required as part of inventive step and not sufficiency (ie to see whether
the technical effect is inventive”.

It is clear …reasoning that the fundamental consideration when a court or

tribunal is considering whether a claimed invention involves an inventive
step is whether the technical effect asserted by the patent applicant or
proprietor is derivable by the skilled person from the application as filed
read with the common general knowledge. It is perhaps worth adding that
…the issues of inventive step and sufficiency should be assessed by
reference to the Application and not the Patent.
Sandoz Ltd v Bristol-Myers Squibb [2023] EWCA Civ 472
EPC SUFFICIENCY
Do you say enough?
The Law
“The European patent application must disclose the
invention in a manner sufficiently clear and complete for it
to be carried out by a person skilled in the art”
EPC Art 83
Two stage test
• (i) Does the specification enable the skilled person to put
the invention into effect?
• (ii) If yes, does the specification enable the skilled person
to put the invention into effect across the full range of the
invention?

• However, the EPO does not verify whether the invention

actually works or not: T 1546/08 Intravascular
stent/EXPANDABLE GRAFTS (unpublished) 8 December
2010
Who judges sufficiency
The "person skilled in the art" for this purpose is
considered to be the ordinary practitioner aware not only
of the teaching of the application itself and the references
therein, but also of what was common general knowledge
in the art at the date of filing the application.
T 206/83 Herbicides/ICI [1987] OJ EPO 5

• Same characteristics as for inventive step: T 206/83 Herbicides/ICI [1987] OJ

EPO 5
• And novelty: T 1414/08 Tissue paper/GEORGIA PACIFIC (unpublished) 5
April 2011
Time of sufficiency
• It must be sufficient from the date of publication (cf UK
law):
• T 429/96 Serine protease inhibitors/AMGEN (unpublished*) 31 May 2001

• The patent must be sufficient at any time from the date of

filing to the end of the patent term:
T 11/82 DC Motor/LANSING BAGNALL [1983] OJ EPO 479
Trial and error?
• The invention needs to be able to be put into effect without undue
burden: T 281/86 Preprothamation/UNILEVER [1989] OJ EPO 202

• “Even though a reasonable amount of trial and error is permissible when

it comes to the sufficiency of disclosure in an unexplored field or - as it is
in this case - where there are many technical difficulties, there must then
be available adequate instructions in the specification or on the basis of
common general knowledge which would lead the skilled person
necessarily and directly towards success through the evaluation of initial
failures or through an acceptable statistical expectation rate in case of
random experiments”
T 226/85 Stable bleaches/UNILEVER [1988] OJ EPO 336
CLARITY
The purpose
• The purpose of the clarity requirement is to ensure that
the word knows what is being claimed (ie it is know what
is prohibited and what is permitted): T 165/84 Foam
extrusion/CONDEC (unpublished) 29 January 1987
• It needs to be clear until the grant of the patent and not just at the
date of filing: T 409/10 Abrasive liquid slurry/EXTRUDE HONE
(unpulished) 8 October 2013.
What clarity is not…
• A claim does not lack clarity simply because:
• It is too complex: T 574/96 Deoxytetracyclines/AMERICAN
CYANAMID (unpublished*) 30 July 1999
• It is too broad: T 238/88 Crown ether/KODAK [1992] OJ EPO 709
Some examples
• “Active ingredient” unclear as not clear what it would be
composed of: T 586/97 Aerosol/SOLTEC (unpublished*)
14 September 2000;
• “Substantially pure” for use as a pharmaceutical product
was unclear as no agreed definition: T 226/98
Famotidine/RICHTER GEDON [2002] OJ EPO 498
• “A dark and uninviting place” part of an amusement part
not clear: Bilgrey Samson’s App (O/577/01)
• “Chimney like” equally unclear: Evans’s App (O/175/10).
CONCISENESS
Purpose
• The purpose of the preciseness requirement is to ensure
that the scope of the monopoly can be established without
undue burden:
T 79/91 Haemodialysis/VEECH [1993] EPOR 91
• Applies to claims individually and the claims collectively
T 993/07 Field device management/FISCHER-ROSEMOUNT (unpublished*) 20 May
2010
SUPPORT
Purpose
• The purpose of the support obligation is to ensure that the
extent of protection corresponds to the technical
contribution made
T 409/91 Fuel oils/EXXON [1994] OJ EPO 653
Minimum requirement
• It is not enough to just recite the claims in the description
T 1048/05 Luciferasel/PERKIN ELMER LAS (unpublished*) 5 December 2007
• The absence of an essential feature from a claim is
(during examination) better objected to as a lack of
support and not insufficiency
T 156/91 Styrolherstellung/METALLGESELLSCHAFT (unpublished*) 14 January 1993
The correct test
• ‘‘to decide whether the claims are supported by the description, it is
necessary to ascertain what is the invention which is specified in the claims
and then compare that with the invention which has been described in the
specification. Thereafter the court's task is to decide whether the invention in
the claims is supported by the description. I do not believe mere mention in
the specification of features appearing in the claim is not necessarily sufficient
support. The word ‘support’ means more than that and requires the
description to be the base which can fairly entitle the patentee to a monopoly
of the width claimed’’
Schering Biotech Corp's Application [1993] RPC 249, 252
Difference between EPO and UK
• At the EPO, support cannot be raised during opposition
proceedings;
• In the UK, lack of support is a ground of revocation
Biogen v Medeva [1997] RPC 1
UNITY
Purpose
• An application must relate to one invention or to a single
inventive concept
EPC, art 82; PA 1977, s 14(5)(d)
Approach
• The test of unity is one of substance and not form and so
it applies to bother independent and dependent claims.
• Common example of single inventive concept: process and product
claim in the same application: W 5/92 Grey-level printing
(unpublished*) 28 February 1992
• A unity objection can be made before or after the consideration of
the prior art: G 1/89 Polysuccinate esters [1991] OJ EPO 155
• Cannot to make an objection on the grounds of unity during
opposition proceedings: G 1/91 Unity/SIEMENS [1992] OJ EPO
253
ADDED MATTER
Added Matter: UK
Section 76 (amendments of applications and patents not to include added
matter):
(1A) Where, in relation to an application for a patent—
(a) a reference to an earlier relevant application has been filed as
mentioned in section 15(1)(c)(ii) above; and
(b) the description filed under section 15(10)(b)(i) above discloses
additional matter, that is, matter extending beyond that disclosed in the
earlier relevant application,
the application shall not be allowed to proceed unless it is amended so as to
exclude the additional matter.
(2) No amendment of an application for a patent shall be allowed under
section 15A(6), 18(3) or 19(1) if it results in the application disclosing matter
extending beyond that disclosed in the application as filed.
(3) No amendment of the specification of a patent shall be allowed under
section 27(1), 73 or 75 if it—
(a) results in the specification disclosing additional matter, or
(b) extends the protection conferred by the patent….
Test for added matter: UK
“The decision as to whether there was an extension of
disclosure must be made on a comparison of the two
documents read through the eyes of a skilled addressee.
The task of the court is threefold:
(a)To ascertain through the eyes of the skilled addressee what is
disclosed, both explicitly and implicitly in the application;
(b)To do the same in respect of the patent as granted;
(c)To compare the two disclosures and decide whether any subject
matter relevant to the invention has been added whether by deletion
or addition.
The comparison is strict in the sense that subject matter
will be added unless such matter is clearly and
unambiguously disclosed in the application either explicitly
or implicitly.”
Bonzel v Intervention [1991] RPC 553 at 574
Learn anything new?
“I think the test of added matter is whether a skilled man
would, upon looking at the amended specification, learn
anything about the invention which he could not learn from
the unamended specification”
Richardson-Vicks' Patent [1995] RPC 568 at 576
Why the rule exists.
• With regard to [added matter], the underlying idea is
clearly that an applicant shall not be allowed to improve
his position by adding subject-matter not disclosed in the
application as filed, which would give him an unwarranted
advantage and could be damaging to the legal security of
third parties relying upon the content of the original
application
G 1/93 ADVANCED SEMICONDUCTOR PRODUCTS/ Limiting feature [1995]
EPOR 97
European Central Bank v Document Security
Systems [2007] EWHC 600 (Pat)
“[97] A number of points emerge from this formulation which have a particular bearing on
the present case and merit a little elaboration. First, it requires the court to construe both
the original application and specification to determine what they disclose. For this
purpose the claims form part of the disclosure (s. 130(3) of the Act), though clearly not
everything which falls within the scope of the claims is necessarily disclosed.
[98] Second, it is the court which must carry out the exercise and it must do so through
the eyes of the skilled addressee. Such a person will approach the documents with the
benefit of the common general knowledge.
[99] Third, the two disclosures must be compared to see whether any subject matter
relevant to the invention has been added. This comparison is a strict one. Subject matter
will be added unless it is clearly and unambiguously disclosed in the application as filed.
[100] Fourth, it is appropriate to consider what has been disclosed both expressly and
implicitly. Thus the addition of a reference to that which the skilled person would take for
granted does not matter: DSM NV's Patent [2001] RPC 25 at [195]-[202]. On the other
hand, it is to be emphasised that this is not an obviousness test. A patentee is not
permitted to add matter by amendment which would have been obvious to the skilled
person from the application.”
European Central Bank v Document
Security Systems [2007] EWHC 600
(Pat)
[101] Fifth, the issue is whether subject matter relevant to the invention has been added.
In case G1/93, Advanced Semiconductor Products, the Enlarged Board of Appeal of the
EPO stated (at paragraph [9] of its reasons) that the idea underlying Art. 123(2) is that
that an applicant should not be allowed to improve his position by adding subject matter
not disclosed in the application as filed, which would give him an unwarranted advantage
and could be damaging to the legal security of third parties relying on the content of the
original application. At paragraph [16] it explained that whether an added feature which
limits the scope of protection is contrary to Art. 123(2) must be determined from all the
circumstances. If it provides a technical contribution to the subject matter of the claimed
invention then it would give an unwarranted advantage to the patentee. If, on the other
hand, the feature merely excludes protection for part of the subject matter of the claimed
invention as covered by the application as filed, the adding of such a feature cannot
reasonably be considered to give any unwarranted advantage to the applicant. Nor does
it adversely affect the interests of third parties.
[102] Sixth, it is important to avoid hindsight. Care must be taken to consider the
disclosure of the application through the eyes of a skilled person who has not seen the
amended specification and consequently does not know what he is looking for. This is
particularly important where the subject matter is said to be implicitly disclosed in the
original specification
Disclosure not the same as within the
scope
“[98.] We can deal with this quite shortly. The added subject-matter is
said to be contained in claim 6. Mr Silverleaf put it this way:
We say that if that claim covers water soluble spheronising agents, it must also disclose the
possibility of using them or it does not actually read on to them at all; because otherwise the
teaching of the document is to use water insoluble ones. We say if in fact the claim is wide enough
to cover water soluble spheronising agents, there must be added matter.
[99.] The trouble with that submission is that claim 6 does not mention
– so cannot possibly teach – water soluble spheronising agents. It just
specifies "a spheronising agent." The fallacy in the argument is to
equate disclosure of subject matter with scope of claim, a fallacy struck
down as long ago as 1991 in AC Edwards v Acme Signs & Displays
[1992] RPC 131 (see e.g. per Fox LJ at p.143)."
Napp Pharmaceutical Holdings Ltd v Ratiopharm [2009] EWCA Civ
252
GROUNDS OF
REVOCATION
A summary
Revocation and Opposition
• Revocation proceedings:
• In the UK can be brought before the court or the
comptroller;
• In relation to a European patent, separate proceedings
are necessary in each country.
• Opinions on validity are available from the Patent Office.
• Opposition proceedings:
• Must be brought within nine months of the grant of the
patent;
• Has effect in relation to the European patent in every
country where it applies.
Grounds of revocation:
Patents Act 1977 section 72
1. The invention is not a patentable invention;
2. The patent was granted to a person who was
not entitled to it;
3. The specification does not disclose the
invention sufficiently;
4. There is added matter which extends the
scope of the protection improperly;
5. There was an improper amendment extending
the scope of protection.
Grounds of opposition:
Article 100 EPC
1. The subject-matter of the European patent was not not
patentable;
2. The European patent does not disclose the invention
sufficiently;
3. There is improper added matter extending the scope of
protection.
THE END…