EPC Law & Practise – Poisonous Divisionals
1. Introduction and Background
1.1 We have identified and researched a highly significant anticipation threat to EPC patent portfolios posed by the widely used strategy of filing EPC divisionals. We have recently distributed a full paper on this subject (see the Note at the end of the present paper) and what follows is an abridged version.
1.2 The facility for filing EPC divisionals has been widely used by applicants for many years, both to deal with non-unity and for other purposes, and very large numbers of “voluntary” divisionals were filed in the period leading up to October 1, 2010. The threat, which has not been recognized previous to our work, is therefore widespread in effect, its discovery pointing to a common, significant omission in strategic planning of divisional filings. We have already applied the threat in EPC oppositions.
2. The Proposition and how it Operates
2.1 We postulate the disruptive original proposition that an EPC application and its divisional(s) may be mutually anticipatory where the subject-matter disclosed is materially the same (as is almost always so).
2.2 Such mutual anticipation can occur where, for example, some (claimed or unclaimed) relevant subject-matter in a parent is entitled to a declared priority date and some(claimed) subject-matter in a divisional is entitled to either a later declared priority date or to the EPC filing date. As depicted in Figure 1 below, the most common scenario where this kind of conflict occurs will involve generic claimed scope in a divisional disentitled to priority and a parent specific embodiment which falls within its scope and is entitled to priority (or vice-versa).