Manual of Patent Practice

Section 6: Disclosure of matter, etc, between earlier and later applications

Sections (6.01 - 6.03) last updated April 2007.

 
Section 6(1)
It is hereby declared for the avoidance of doubt that where an application (the application in suit) is made for a patent and a declaration is made in accordance with section 5(2) above in or in connection with that application specifying an earlier relevant application, the application in suit and any patent granted in pursuance of it shall not be invalidated by reason only of relevant intervening acts.
 
Section 6(2)
In this section:
“relevant application” has the same meaning as in section 5 above; and
“relevant intervening acts” means acts done in relation to matter disclosed in an earlier relevant application between the dates of the earlier relevant application and the application in suit, as for example, filing another application for the invention for which the earlier relevant application was made, making information available to the public about that invention or that matter or working that invention, but disregarding any application, or the disclosure to the public of matter contained in any application, which is itself to be disregarded for the purposes of section 5(3) above.

6.01

This is an avoidance of doubt section and is based on the wording of Arts. 4A and 4B of the Paris Convention. The section confirms the provisions of ss.2, 3 and 5 that if an invention in an application in suit is entitled for priority to the filing date of an earlier application specified in a declaration of priority under s.5(2) then any disclosure or use of matter contained in that earlier application on or after the filing date of the earlier application cannot invalidate a claim to that invention.

6.02

In Beloit Technologies Inc v Valmet Paper Machinery Inc [1995] RPC 705 Jacob J held that s.6(1) does not carve out from the state of the art matter made available to the public in the priority interval just because that matter is in the priority document. Thus, an invention which is not entitled to the priority date of an earlier application can be invalidated by the disclosure or use, between the filing dates of the earlier application and the application in suit, of matter contained in the earlier application.

6.03

In his judgment in Beloit Technologies Jacob J reached the same general conclusions as the Enlarged Board of Appeal (G3/93 OJEPO 1-2/1995) which considered the implications of a document published during the priority period, the technical content of which corresponds to that of the priority document, and concluded that the published document constitutes prior art citable against the application claiming priority from the priority document to the extent that such priority is not validly claimed. This also applies if a claim to priority is invalid due to the fact that the priority document and the subsequent application do not concern the same invention because the application claims subject matter not disclosed in the priority document.