The Shark Tank of Patents

In season 13, episode 12, of the TV show "Shark Tank" (in Germany: "Die Höhle der Löwen" and in UK: Dragon's Den), entrepreneurs present HiccAway which is an L-shaped straw that creates an ideal amount of pressure to stop hiccups with a field-tested design backed by clinical studies and research.

In addition to a US and Canadian patent application, a European patent application was filed for the HiccAway as well, for which a partly positive European search opinion was issued. On the basis of the HiccAway, priority rights are briefly discussed and an effective delimitation over self-established prior art is shown.

Note: "Claiming priority" means that the applicant of a first application files a second application within a year (in the same or in another country, or region) and claims the filing date of the earlier application as a so-called priority date for all subject-matter disclosed in the first application (cf. Art. 87 EPC). In Consequence, the prior art which is taken into account for assessing novelty and inventive step of the invention claimed in the second application would not be everything made available to the public before the filing date (of the second patent application) but before the priority date, i.e. the filing date of the first application.

The European Patent Application –
EP3871566A1 (EP'66)

Subject-matter of protection

Originally, an attempt was made to protect the HiccAway with three independent claims 1, 8 and 13 directed to respective devices. However, claims 1 and 13 are already disclosed in an earlier application - cited as D1 (WO2019143643A1) in the European search report - from the same applicant.

Note: Normally, the application of which the filing date is claimed must be the first application that has been filed for the invention by the same applicant, otherwise the priority claim for this invention is invalid. That is, a "chain" of priorities is not admissible.

EP'66 has a filing date of August 17, 2020 and claims the priority of US202016802432 with the priority date of February 26, 2020 for the subject-matter of claims 1, 8 and 13. As mentioned above, D1 (from the same applicant) also discloses the subject-matter of claims 1 and 13 and claims priority from US 62/619,196 with the priority date of January 19, 2018.

Hence, D1 is an earlier application by the same applicant which invalidates the priority claim of EP'66 for the subject-matter of claims 1 and 13. That is, the effective dates of both claims is the filing date and any publication before the filing date is prior art.

The subject-matter of claim 8 is not disclosed in the earlier application D1 and therefore validly claims the priority from US202016802432 with the priority date of February 26, 2020. Nevertheless, the publication date of D1 is July 25, 2019, and is thus prior art which can be held against the subject-matter of claim 8 at least for inventive step.

So, claim 8 of EP'66 defines the following features (cf. reference signs in parentheses from illustrated Figs. 8 and 10 of EP'66):

M1: A device (200) for relieving hiccups comprising: M2: a hollow body (210) having a first end (212) and a second end (220), said first end (212) being adopted to receive a user's mouth; said second end (220) being spaced from said first end (212);

M3: a first hole (238) extends through said hollow body (210) adjacent said second end (220); and

M4: a cap (215) mounted to said second end (220), said cap (215) having at least one second hole (236), said cap (215) being rotatable to align said first and second holes (238, 236) to allow fluid to be drawn through said aligned first and second holes (238, 236) through said hollow body (210) and through said first end (212);

Fig. 8 of EP'66 | Fig. 10 of EP'66

M5: whereby said first and second holes (238, 236) are sized to require a suction of at least 10 cm of water.

Prior Art – D1 (WO2019143643A1)

Even though D1 is not novelty-destroying for the subject-matter of claim 8 and could be theoretically used for non-inventiveness argumentation by the examiner, the examiner cites D1 only as technological background for the subject-matter of claim 8 of EP'66, which should thus be allowable.

D1 discloses (cf. Fig. 4 of D1) a similar hiccup relieving apparatus 110 including a tube 114 with a first end 116 and a second end 120. A mouthpiece 118 is molded to the first end 116, where multiple orifices 130 are positioned at the second end 120 (cf. [0117] of D1).

Apparently, D1 fails to disclose a cap which enables a user to easily adjust the pressure differential when sucked thereon but also allows for easy removal for cleaning and reattachment for use (cf. [0017] to [0019] of EP'66).

Thus, the hiccup relieving apparatus 110 of D1 fails to provide the skilled person with explicit or implicit motivation to come up with such an idea due to the structural characteristics as given in D1, which is considered as starting point when assessing inventive step (cf. Fig. 4 of D1).

Claim 8 of EP'66 is thus not only novel but also inventive over D1.

Note: A European patent could be obtained provided that the claim set is delimited to independent claim 8, thereby omitting subject-matter directed to claims 1 and 13 as they do not validly claim priority.

Fig. 4 of D1

Conclusion

The HiccAway EP application is a good example to demonstrate the practical assessment of priority rights in patent prosecution. In particular, it was shown that EP'66 validly claims priority for the subject-matter of claim 8, but invalidly claims priority for the subject-matter of claims 1 and 13.

Hence, the effective dates of claims 1, 8 and 13 are not the same but different so that different prior art documents become relevant for them when assessing patentability.

Autor: Julian Graf, Partner

Disclaimer: The above contribution reflects the personal opinion of the author. The assessments and statements made in the article do not constitute legal advice and are provided under exclusion of any liability. If you need an assessment of an individual case, please contact the author and/or the law firm KUHNEN & WACKER.