European Patent Office (EPO) - Prior Art Effect of Erroneously
Published Foreign Patent Application
Under the European Patent Convention almost any public disclosure of an invention prior to the priority date of a European patent application destroys the novelty of a patent application for that invention. Almost the only exception is a six-month grace period provided by Article 55 in respect of disclosures that are "an evident abuse in relation to the applicant or his legal predecessor". In the case of
Deodorant detergent/Unilever an Appeal Board was confronted with a situation where there had been publication of a relevant patent application in Brazil contrary to the applicant's wishes. Under Brazilian law patent applications are normally published about two years after their priority dates. In the present situation the applicants had attempted to delay the publication of the Brazilian application by abandoning any claim to priority before publication occurred, thereby expecting that publication would be delayed for a year. Unfortunately, however, the Brazilian application was published on the same date as it would have been had the priority date been claimed. This date was prior to the filing date of the European patent being considered by the appeal board which therefore had to consider whether the Brazilian publication was relevant prior art or whether it was excused as an "evident abuse " of the applicant. The board decided that the publication would not be excused, stating:
even if the publication of the patent application had infringed Brazilian law, that in itself may or may not be tantamount to an evident abuse in relation to the applicant. All governments, as well as their agencies can infringe personal rights, including commercial rights of the kind here involved. However, not everything done in infringement of local laws ... is of necessity an abuse in relation to applicant's rights. ... Whilst it may be true that all abuse of an applicant's rights also involves a breach or infringement of his rights, the converse is not necessarily true. In the case of an abuse ... the state of mind of the 'abuser' is of decisive importance.
The board went on to distinguish the case before it from situations where there was a legally enforceable obligation of confidence and, relying on a declaration from the Brazilian Patent Office that what had occurred in the present case was merely a "lamentable error" concluded that there had been no "abuse" of the applicant's rights "let alone evident abuse, which is the standard of reprehensibility laid down by Article 55" (emphasis in the original).
