The Nestec v Dualit case (Nestec SA & others v Dualit Ltd & Others  EWHC 923), decided in April 2013 by Mr Justice Arnold, primarily concerns coffee machines. As legal decisions go, it has several interesting elements, but perhaps of most interest to practitioners is the Judge’s decision about priority entitlement. The Judge found that Nestec’s patent was invalid, because the application from which their patent claimed priority (that is claimed the benefit of an earlier filing date) contains material that once published renders the claims of their patent invalid. This should not usually happen; for Nestec, it is the patent equivalent of unholstering your weapon, and shooting yourself in the foot. What might this mean in future for patents that hope enjoy a claim to priority?
Nestec took action in the English High Court against Dualit for supplying capsules for use in Nestec’s coffee machines. The patent that Nestec sought to enforce, EP(UK) 2,103,236B, is directed to a system including a capsule extraction apparatus and a capsule. Dualit raised a number of defences, including an argument that the claims of Nestec’s patent were not entitled to claim priority from their earlier European application (the European priority application), because the claims of the later patent had been broadened and because the earlier priority application had subsequently been published. Under Art 54(3) of European patent law, this means that Nestec’s own European priority application would count as prior art, for novelty purposes only, against the claims of their later patent, if those claims were not entitled to the earlier priority date. Nestec argued in return that, based on the disclosure of their European patent and European priority application, it could not be not possible that their claims simultaneously were not entitled to priority and lacked novelty over the priority application.
In the end, Justice Arnold denied the priority entitlement of claim 1 for two principal reasons, one of which is especially worthy of further consideration as it raises the possibility that if a second application contains any disclosure not in the priority application, entitlement to priority of all the claims may be denied. This can of course have adverse consequences for the validity of the claims, even if the priority application is not published.
Nestec’s patent concerns part of an espresso machine that makes espresso from ground coffee in capsules. The patent includes disclosure that the capsule can be held in an inclined orientation, while the ‘inclined orientation’ feature was the subject of dependent claim 5. In assessing the claim to priority, there was dispute about the extent to which the priority application discloses this feature. Nestec argued that it was implicitly disclosed in the European priority application, and all that they had added by way of their later patent application was to make an implicit feature explicit. Justice Arnold decided that the inclined feature was not disclosed in the priority application. So far, so unremarkable.
Nestec further argued that even if the priority application did not disclose the inclined feature, claim 5 may lack priority entitlement, but claim 1 would still be entitled to the priority claim as the orientation of the capsule is not mentioned in claim 1. The judge disagreed, and it is his reason for doing so that is of interest.
Arnold J. observed that “Such arrangements [in which the capsule is inclined] are expressly disclosed in the [later filed patent] specification, and the skilled reader would appreciate that claim 1 included them. Thus the invention of claim 1 is not entitled to priority for such arrangements”. No other reason is given by the judge for denying priority to claim 1 on the ground of the inclination feature (although the judge did also consider entitlement to priority on another ground and also found it lacking).
It is interesting to speculate what would have happened had claim 5 and the disclosure of a capsule with an inclined orientation been deleted during prosecution. Ignoring the other ground, would the judge’s decision on priority entitlement have then been different? What if they had been deleted after grant? What weight would the judge have given the transient disclosure?
The purpose of allowing a later application (and eventual patent) to claim priority from an earlier patent application is twofold. A priority claim allows the cost of filing overseas patent applications to be deferred for up to 12 months from when the priority application is filed. Importantly, a priority claim also allows the applicant to file a patent application at an early stage in research, to protect the eventual patent from subsequent prior art while conducting further research that may be incorporated in a later application filed within 12 months without losing that provisional protection. For a priority claim to be valid, the claims of the later patent have to cover an invention disclosed in the earlier priority application. The question is to what extent the disclosure of features in the later applicaton can affect the validity of the priority claim.
The finding discussed above calls into question the extent to which a priority claim can be used to achieve the second purpose; it seems that inclusion in the later application of an embodiment (or other disclosure) not in the priority application may rob a claim of priority entitlement by making explicit that the claim protects an embodiment not disclosed in the priority application, even though without that disclosure, that protection would be implicit. One effect of this may be to discourage applicants from disclosing a feature that although perhaps not preferred at the time of filing is nevertheless useful (and might later turn out to be of considerable importance).
By way of illustration, a first application claims apparatus comprising elements A, B and C, and discloses a number of embodiments of such apparatus that support the claims. A later application is filed claiming priority from the first and containing identical disclosure and claims to the first application. A patent is then granted on the later application without amendment. In this situation, there is little doubt that the claims of the patent are entitled to priority and that the broad claim protects many undisclosed embodiments.
In another case, a first application again claims apparatus comprising elements A, B and C, and discloses a number of embodiments of such apparatus that support the claims. During the priority year, the applicant conducts further research that suggests that the addition of a fourth element, D, can be useful. A later application is filed claiming priority from the first application and containing all the disclosure and claims of the priority application plus disclosure of a further embodiment in which the apparatus includes the element D. Again the patent is granted without amendment. The broad claim, to apparatus comprising A, B and C, protects apparatus including the fourth element D, as well as many other, undisclosed, embodiments. However, following Arnold J.’s reasoning in this case, the broad claim might lose entitlement to priority as the disclosure in the later application of element D alerts the skilled reader that the broad claim of the patent covers an embodiment including element D that was not disclosed in the priority application, notwithstanding that the priority application and the patent contain adequate disclosure to support the broad claim.
This means that the patentee’s position in the second case is worse for having disclosed more; had they said nothing about element D, their claim to priority would, presumably, be upheld. In some cases, a new feature will be of some commercial importance or will be expected to be a useful feature for possible inclusion in a broad claim to distinguish the claim from the prior art so that its inclusion in the second application will be considered essential. However, when this is not the case, applicants may now consider carefully whether the risk of including a new feature in a second application is worth the risk of losing priority entitlement for a broad claim even when the new feature does not appear in it. Is this a desirable outcome? It appears to discourage applicants from conducting further research once a priority application has been filed and if further research is conducted, from disclosing the outcome unless it is of considerable significance.
A Possible Escape?
Mr Justice Arnold followed Mr Justice Kitchin in the Novartis AG v Johnson & Johnson Medical Ltd  EWHC 1671 (Pat) decision in holding that a claim can have more than one priority date if it covers a limited number of alternatives, some of which are disclosed in the priority application and some of which are not, even if those alternatives are encompassed in the claim by a generic term. However, in the present case, this approach did not help the patentee, if only because Nestec did not argue that in the area of the inclination of the capsule, the claim was entitled to more than one priority date. However, the judge also stated said that he did not “consider that such arrangements [in which the capsule is inclined] are clearly defined alternatives to the other arrangements covered by claim 1”, and so presumably would not have found that claim 1 was entitled to priority over even a part of its scope.
In this case, it appears that claim 1 was denied priority because the disclosure of the patent made it clear that the claim covered an embodiment not disclosed in the priority application, even though the claim did not recite the salient feature of that embodiment, and would on the face of it cover that embodiment whether or not the embodiment were disclosed in the patent. What lessons can be learnt from this decision?
- The obvious one is where possible, do not rely on a priority claim for the validity of your patent.
- Make your priority application as full as possible, and always include claims in priority applications.
- Where material is added in the priority year, the advisability of allowing priority applications, especially European priority applications, to publish is also questionable; it is easily avoidable and may cause problems later.
- The most difficult issue that this case raises is the effect on a claim’s priority entitlement of the inclusion in a later patent application of features, not in the main claim, that are not in the priority application. It seems that if a feature is not disclosed in the priority application and is not likely to be introduced into claim 1 (perhaps because it will not add patentability to the claim), one should consider carefully whether to include it in the later application at all. Doing so, may rob claim 1 of its priority entitlement (even if the feature is not mentioned in claim 1) without providing any significant benefit to the application or patent itself.
The judge’s reasoning calls into question whether priority claims can be used for one of the purposes for which they have been used, the conduct of further research and the incorporation of the results in a later patent application. The decision is subject to appeal.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.