Applicability of Pending Applications as Prior Art
Christof Keussen
Thank you very much for your kind introduction. My topic today is the
availability of early applications as prior art, earlier, unpublished applications.
We, as patent professionals, are there to serve our clients but, unfortunately, our
thinking occasionally tends to be somewhat remote from the thinking of our
clients. Go to your average client and explain to him what is an earlier, prior art
effect of an unpublished earlier application — can be difficult if you want to
explain that to an average skilled person. And, I would think that worldwide
patent harmonization is a value in itself, but I would also think that this
harmonization should be on a level which is simple, straightforward and, to the
extent possible, can be understood by what we call the “average skilled person.”
The patent world should not be too remote from the real world.
And, if we jump into the topic with a real world scenario, let’s assume you
are the skilled person — I’ll leave it open whether you are the average skilled
person — sitting there and having a technical problem in front of you. You have a
pile of prior art. You study the prior art and see whether there is any hint or
teaching towards solving your problem. This pile of prior art definitely does not
include earlier unpublished applications. So, in real world scenario, there is no
prior art effect of earlier, unpublished applications. And, the question of the
average person would be: What is the justification for including such applications
into the prior art that are not available to me? And, I think this justification in the
view of the patent professionals is mostly to avoid double patenting. If you have
made an invention, you should get a patent, but just one. So, identical inventions
should not be claimed in more than one patent and, for this reason, there has to be
some kind of prior art effect of earlier, unpublished applications. This is the
justification for deviating from, let me say, the real world scenario. And
interestingly, for example, the European patent convention is very rare that earlier,
unpublished applications are no real-world prior art. The language used in Article
54.3 makes it clear that this is a legal fiction. The language is that such
applications shall be considered as comprised in the state of the art. They are not
there, they shall be considered to be comprised, and this legal fiction makes them
prior art, for what purpose I will come to that later.
When discussing harmonization of such a legal fiction — it is nothing
more than a fiction — we should keep in mind that any deviation from the real
world requires proper justification for doing so, and this justification is avoidance
of double patenting.
What do we have in existing international treaties, namely in the Paris
Convention? Nothing is there directly addressing the issue of earlier, unpublished
applications as prior art. But, in Article 4.B, we find the clear provision that the
first application should give rise to the right to priority. That, in essence, means
any patent or any invention should be derived from the application, the first
application disclosing this particular invention.
Later applications: It should not be possible to claim the very same
invention which is disclosed in an early application in a later filed application.
Now, this is the basic goal, to avoid double patenting. But how to achieve this
goal? And, there are two basic approaches. The first is the prior claim approach.
The prior claim approach compares the claims of the earlier, unpublished
application, or the patent granted thereon, with the claims of the later application.
And, the question is: Is there any identity or overlapping scope? And then the
claims of the later application must be adjusted accordingly.
In principle, this prior claim approach directly addresses the double
patenting issue. It looks at the rights derived from the earlier application once it
matured into a patent and the rights which will be derivable from the claims of the
later application once it is granted. And, as you know, the U.S. currently does
have a prior claim approach, in some respects, and you will hear that later.
Germany also had the prior claim approach until December 31, 1977. And, my
feeling is that it was abandoned for good reasons, for the European harmonization,
because it is really difficult to apply. The main point is that, first, the claims of the
earlier application are not static. They may be amended during examination, and
the relevance of this early application may change during examination of the later
application. That’s a difficult point. And, second and perhaps more importantly,
it is not the standard duty of the patent office to determine the scope of claims.
That is left to the courts, and the patent offices do not have any, or do not have
much experience determining the scope. So, the prior claim approach requires
patent offices to do something which they are not used to do and which they
typically do not do well.
The second approach, and we are all familiar with that, is the whole
contents approach. And this is based, again, on the legal fiction that the complete
disclosure as the earlier application forms part of the prior art, again, a legal
fiction. It is not prior art in reality. Very important advantage of the whole
contents approach is that the relevance of the earlier application is static and fixed
as of its filing or priority date. The disclosure counts, and the disclosure is static.
The second advantage of the whole contents approach is that in order to
apply it, patent offices must do what they are used to do, namely determining
whether or not something is disclosed — disclosed, not claimed — in an earlier
document. That’s very standard day-to-day duty, so it is very easy for patent
offices to apply the whole contents approach, and they are very familiar with that.
We in Germany, as I said, have experience with both approaches, prior
claim and whole contents approach, and we strongly advocate the whole contents
approach, which we have currently at the European Patent Convention. And, we
think that this is the better approach for a harmonized, international patent system,
mostly due to the fact that it is easy to apply for the patent offices, number one,
and number two, that the disclosure of the earlier application remains fixed as of
its application or priority date.
Assuming that we work according to the whole contents approach, to which
extent shall the whole disclosure of the earlier application be applicable as prior
art? Novelty only, or novelty and inventive step? If we go back to the beginning,
there I said the purpose of the whole operation is to avoid double patenting. And,
I also said it is an exception from the norm, from the real world, an exception
which is created by way of legal fiction. And, I think that we should leave or that
we should go this way, creating a legal fiction only to the minimum extent
necessary to avoid double patenting. We should not go further. I see no valid
reason for that, and if we take this approach, then I think we end up in a situation
where the earlier applications are citable against novelty only. If we cite them for
novelty only, then it will not be possible to claim the very same invention again in
a later-filed application. Of course, if we claim the very same invention again,
then it is not novel compared to the earlier filed application. If there is a
modification in the claims of the later application, compared to the disclosure of
the earlier filed application, then I see no justification for requiring this
modification to be inventive, to be inventive compared to the disclosure of the
earlier, unpublished application.
I think there is no valid reason to prohibit patenting of similar but not fully
identical inventions in a later filed application. This is no longer an issue of
double patenting, and, again, keeping in mind that the real world skilled person
has no access to this earlier filed application, we should leave it there for novelty
purposes. This achieves the goal of avoiding double patenting but, again, should
not go further. This would be a deviation from the real world scenario which, in
our opinion, is not justified, in no way justified. This leaves the patent law
somehow linked to the real world and, again, if the claims of the later filed
application comprise any modification and perhaps even a slight or small
modification, this is no longer an issue of double patenting. The claims might be
similar, but they are no longer fully identical.
And we, therefore, support Article 8, paragraph 2 of the draft SPLT which,
in the current draft or in the current version, makes available earlier, unpublished
applications for the purposes of novelty only. I think this is adequate to avoid
double patenting, on the one hand, in a way that is feasible for patent owners,
patent applicants and workable for patent examiners in the patent office, and we
see no need or justification for going any further by making the applications
available as prior art for inventive step purposes, also. And, we also do not see it
as a good compromise. I’ve read a proposal where such earlier unpublished
applications should be citable for the purpose’s inventive step on its own only,
without being combined with other pieces of prior art. I mean that is a very
difficult issue. If you cite something against inventive step on its own, you have
to combine it somewhat either with another piece of prior art or with common,
general knowledge. And, if you are allowed to combine it with common, general
knowledge only, you still have to submit documents documenting your common
general knowledge. So, in effect, you end up with combining documents.
I now will briefly address the issue of what international or regional
applications should be citable as prior art, or what is the prior art effect, in
particular, of a PCT application designating all PCT member states, which will be
the standard situation as of next year, as there will no longer be the need to
designate specific countries. We currently have two alternatives in the draft
SPLT, and one alternative is that such earlier PCT applications become prior art
only if they enter the respective national or regional phase. And the second
alternative is to set this requirement aside and to make PCT applications available
as prior art in each and every PCT country, regardless of whether or not they enter
the regional or national phase in this respective country. Of course, any PCT
application will become available as prior art as of its publication date; that’s
clear. But, the question remains: What is with the PCT application designating
the respective country but not going into the national phase in this respective
country? If we see it from the perspective of the real world scenario and the goal
to avoid double patenting, I think, then, we come to the conclusion that such an
application should be citable only where it effectively enters the country. Of
course, only there is the real danger of double patenting. If it does not enter the
respective country, then there is no issue of double patenting because there is only
one application pending. The PCT application is no longer pending in this
country.
I also see the argument that following the various national parts of a PCT
application may be difficult and perhaps burdensome for an applicant who wants
to know whether or not this particular PCT application is citable against his later
application in a specific country. I think that this is an issue where we are, to a
certain extent, open to both positions. In Europe, as you know, we currently have
Article 158 EPC, holding that only PCT applications effectively entering the
European regional phase are citable as earlier, unpublished applications against the
later filed European applications. So, we currently live with the situation where
the mere designation of the EPO in the PCT phase is not sufficient. But, I could
also foresee living with a situation where the mere fact that the EPO is designated
in a PCT will do to make this effective prior art in Europe and, of course, in other
countries, if we’re speaking of harmonization.
The next issue is whether or not we need specific anti-self-collision
provisions. There is a long history of discussing this issue in the context of
worldwide harmonization, but also in the context of the European Patent
Convention. There are many voices promoting to introduce anti-self-collision
provisions in the SPLT, but there also have been voices promoting including such
a provision into the European Patent Convention. You know, the European Patent
Convention has been revised with the EPC 2000, which will enter into force in the
foreseeable future. The point is that if the whole contents approach, limited to
novelty only, is properly applied, I do not see a situation where there is any need
for an anti-self-collision provision. There are basically two alternatives. Let’s
start from a situation where the applicant has two applications with different filing
dates and priorities. Either a specific invention he wants to claim is disclosed in
the first application, then he can claim it there. And, if it is disclosed in the first
application, he should not be entitled to claim it again in the second, later-filed
application.
The second alternative is it is not disclosed in the first application, but it is
disclosed in the second application for the first time. Then, he is entitled to claim
it there. There has to be at least one claim feature differentiating the invention
from the disclosure of the first application, but this can be a small difference, as
we have novelty requirement only, no inventive step requirement.
If, a third alternative, the invention he wants to claim is nowhere disclosed,
either in the first or second application, which in practice very often happens, then
he is not entitled to claim it anywhere. The point is, if we clearly limit the prior art
effect to novelty purposes, then any invention disclosed for the first time in a
subsequent application can be claimed there. And, there is no need to include any
anti-self-collision provision.
I go further and would think that once the earlier application is published,
then it is of course citable as a standard publication for purposes of both novelty
and inventive step against any later filed application, but that is justifiable. I think
there is no reason to somehow diminish the prior art effect of a really earlier
published application against any later-filed application of the same applicant. So,
again, I see no argument for an anti-self-collision provision, and I also see no need
in the framework of a proper novelty-only whole contents approach. And, I also
note that during the revision of the European Patent Convention, such proposals
were tentatively made, and most European non-governmental organizations, which
include the Patentanwaltskammer but also CIPA, were, I think, rather strongly
against such a provision. And, I recall a CIPA commentary saying that does not
seem to be fully thought through.
So, to summarize, our position is any earlier, unpublished application must
be available to a certain extent as prior art, but only to the minimum extent
necessary to avoid double patenting. That goal is achieved by making it available
for novelty purposes only, and by applying the whole contents approach. We are
open to discussions whether or not a PCT application should be available in any
case, or only if it meets the requirements for entering the respective national or
regional phase. And, we see no either need or justification for a separate anti-selfcollision provision.
That’s all for the moment. I will be happy to answer questions, and thank
you very much. (Applause)