UK & EPO Patents: Self-Collision & Priority

Self-collision, in which a publication of a patent application is prior art against another patent application in the same family, has been the subject of a number of recent decisions in the UK and EPO. In Nestec SA & ors vs Dualit Ltd & ors in the UK Courts, the patent in question was found not to be entitled to its priority claim, with the priority document itself then becoming novelty destroying prior art under Section 2(3) UK Patents Act. On the same theme, in Board of Appeal decision T1496/11 it was ruled that the patent did not have a valid claim to priority, the consequence of this being that a divisional application (with a valid priority claim) became prior art under Section 54(3) EPC.

There have also been a number of recent decisions in the UK and EPO that provide an up-to-date summary of the assessment of whether a priority claim is valid. Of particular interest are the recent decisions of the UK Courts on Samsung’s priority claims in their case against Apple ([2013]EWHC 467 and 468), and the EPO Technical Board of Appeal decision T0107/09 in relation to claiming priority from a US application where biological material was filed after the priority date.

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