A couple of years ago I wrote a post on the question of whether a divisional application could effectively poison its own parent if the priority document became Article 54(3) prior art as a result of a claim to priority being invalid. At the time I thought it was a bit far-fetched, although I could not see any actual reason for the hypothesis to be wrong.Prompted by a recent decision in the Patents Court (Nestec v Dualit - see paragraph 111, and the IPKat here for more details) in which claims of a European patent were found to lack novelty over its own priority document, I have now been pointed towards a recent decision by the EPO, T 1496/11. In this, the similar but potentially more dangerous "poisonous divisionals" (now a registered trade mark - see below) hypothesis appears to have been put to the test and found to work in practice.
The Board of Appeal found that claim 1 of patent EP0930979, as maintained by the opposition division, did not have a valid claim to priority because it had been generalised to encompass more options than were disclosed in the priority document. As a result, a divisional application became relevant for novelty under Article 54(3), and the claim was found to be anticipated. In this case the problem could be (and was) easily fixed by narrowing claim 1 to again have a valid claim to priority. I expect a fix similar to this would be possible in most cases, although it would probably result in a less satisfactory scope than the patentee was hoping to get. The decision does, however, confirm that the potential prior art effect of divisional applications should be carefully considered and not just dismissed as a theoretical possibility. More importantly, it shows that great care should be taken when filing an application from which priority will be claimed, particularly when the priority filing is narrow in its disclosure and needs to be generalised in a later filing. In some cases it might even be worth abandoning a priority filing and re-setting the clock to avoid such a problem.
Update 8 May 2013: See also the news article here from Hoffmann Eitle, K's Law here, and a (typically wordy) article from Avidity here.
Update 9 May 2013: In what seems to me to be a rather strange move, Avidity IP Limited have registered the terms 'poisonous divisional' and 'poisonous divisionals' as a series of trade marks at the UK IPO under class 45 for various intellectual property and other services. Whether they will seek to (or be able to) enforce the marks in relation to the terms being used in a blog post or otherwise is, however, unclear.
Update 16 May 2013: The generally excellent IPCopy blog from Keltie has picked up on the issue here, and added some interesting points about the relevance of Nestec v Dualit., as well as proposing an alternative to the 'poisonous divisionals' trade mark.
Update 12 June 2013: See the follow up post on my solution to the problem here.
Here's a thought: there's nothing in Article 54(3) to suggest that "European patent applications as filed" can't include the subject patent application itself. So what's to stop a European patent application, which contains a broad claim that isn't entitled to priority, from being cited against itself under Article 54(3)? This doesn't require any divisionals or published priority applications.
ReplyDeleteThanks for the thought TJ, which in my opinion seems to show the basic flaw in the poisonous divisionals hypothesis in a reductio ad absurdum way. If a divisional application can be used against its parent, then the same argument should apply to the disclosure of the parent application itself since, as you say, A54(3) does not state that it has to be a different European application. I wonder if this could be used to provoke a referral to the Enlarged Board.
ReplyDeleteI might try running the argument next time I file an opposition, if there's scope to do so.
ReplyDeleteA54(3) does not state that it has to be a different European application, but it does state that the "prior" art must have been filed earlier!
ReplyDeleteBe careful with your words. A54(3) actually refers to "dates of filing" which, by virtue of A89, will be the priority date (to the extent that the priority claim is valid). This is the essence of the problem, as the relevant disclosure may have a valid claim to priority but the claim might not.
DeleteMy point was simply that an application cannot anticipate itself - irrespective of the validity of its priority claim.
ReplyDeleteI agree that should be the way it works, but if a divisional can be used as prior art against its own parent then it must also work for the application itself. This is the logical absurdity that appears to lie at the heart of the hypothesis.
DeleteThe problem only arises when the priority date is validly filed for the divisional but not for the parent. Thus the divisonal has an earlier filing date and may become relevant when assessing novelty.
DeleteThe "poisonous divisional" and "poisonous priority application" situations are understood and, IMO, follow necessarily from the law; in these cases separate applications have different effective dates of filing.
DeleteMy objection is to the suggestion that a single application can anticipate itself! This does not in any way follow from A54(3), because the application cannot be filed earlier than itself.
A54(3) refers to applications, not bits of an application. Therefore, a divisional application or a priority application - being "applications" - can be prior art. An embodiment of the description of the subject application cannot.
I think it does actually follow from the wording of A54(3) in combination with A54(2). Let's take the example where claim 1 does not have a valid claim to priority because it is broader than anything disclosed in the priority application. The date of filing in relation to the claim will therefore be the date on which the European application was filed. Under A54(3), however, the date of filing in relation to the content of the application will be the date of filing the priority application, by virtue of A89. This means that the state of the art will include the content of the application itself to the extent that the content is also present in the priority application. The application will therefore in effect be prior art against itself. It does not need the application to be filed earlier than itself, as this is achieved by having a claim that has an invalid claim to priority. Your comment about A54(3) not referring to bits of applications is simply wrong because different parts of an application, or even a single claim, can have different claims to priority. See A88.
DeleteIf you accept that two applications filed on the same day, one entitled to priority and the other not, you would, I presume, not see any problems with the priority-enabled one being potential prior art against the other. Accordingly, there is no real reason why the situation should change if initially the applications are bundled together into a single filing - once they are correctly split apart, the same considerations should apply. EdT
ReplyDeleteAgreed EdT.
DeleteWho round here doesn't agree? If so, why? Where is the public policy reason to encourage applicants to bundle a plurality of inventions into a single patent application, to be divided later, during prosecution?
And what is the alternative to what the EPC provides? Set up your patent statute so that your own earlier unpublished filings don't count as prior art? That is the way countries outside Europe do it. But wouldn't that cause more unfairness than it relieves?
I agree that there seems to be an inescapable Art54(3) EPC self-collision between the divisional and parent if the divisional claims a species which enjoy priority while the parent claims a genus which, as a claim, does not enjoy priority (even though some specific species) should. I think you could save the parent genus claim (or the part of interest) by simply applying a disclaimer to the genus claim to disclaim what would be Art 54(3) in the divisional. That should allow one to cover all the subject-matter.
ReplyDeleteDon't follow. Sorry. Suppose the priority document is an enabling disclosure of the ongoing Best Mode of your invention. It usually will be, won't it. You spend the Paris year working on your invention and file PCT with some additional musings and a solid set of claims that capture what you see as the patentable inventive concept.
DeleteBut then the EPO gives you its search report and you find you have to divide, to protect each of the surviving fragments of patentability.
In both parent and div you go to issue with claims that do not add matter but are not directed to the "same" invention as you have in your priority filing.
And you want to disclaim (in both parent and div) your "Best Mode"? Is that helpful to your client? How much should client pay you for those services? Is it all the fault of the client?
You only disclaim what is anticipatory in your previous priority that would be covered separately in either divisional/parent. In your example, if I have understood correctly, the claims that are granted in both the parent and divisional do not cover the "best mode" which was present at priority filing because of how you amended after eceiveing the ESR. You are therefore forced to, because of prior art found in the ESR, to cut out the best mode. I guess that, because the priority only covered the best mode, you would lose right to priority. I cannot therefore see how it would self-collide, but even if it did, disclaiming the best mode (which you cannot have in any claim because of other prior art anyway) would not affect the scope of the claim you can achieve
DeleteThis is the anon of yesterday afternoon. I am sorry I did not make myself clear enough yesterday. So, I'll try now, to make amends.
DeleteThe ESR wipes out your claim 1 but not your Best Mode.
Your revised claim 1, in each of parent and div, is narrow enough to be patentable over the ESR prior art, but wide enough to still cover the subject matter of prime ongoing interest, namely, your very Best Mode.
Claim 1 in the parent, and claim 1 in the div, are both directed to an inventive concept which is not "the same" as in the priority document. If you like, think of them each as an "intermediate generalisation" that was disclosed in the end of Paris year filing but NOT in the earlier application at the start of the Paris year.
In this way, each such claim 1 lacks novelty over the matter disclosed in the other of the two A publications in the family. Disclaim, if you like, the Best Mode but is that a good idea when the entire point of the patenting exercise is to stop others using your Best Mode.
Does that help?
Anon @ 11:50
ReplyDeleteThanks for the clarification:
Taking your following sentence
"Claim 1 in the parent, and claim 1 in the div, are both directed to an inventive concept which is not "the same" as in the priority document." Therefore, because of the ESR prior art, you have lost the right to priority and both claims (div and parent) have an effective filing date of the later Paris filing date. In that case, you can't have an Art54(3)EPC anticipation from the priority and the self-collision problem does not materialise.
On the issue of the best-mode, I never really apply it in Europe because the EPC does not require it - only the enblaing disclosure according to Art 83. Therefore I would say that you disclaim what is required to get the claim granted and, if to do that, you need to disclaim the best-mode, so be it. Of course, the applicant should then consider that, if he cannot have the best-mode covered, whether it is worth getting a patent right at all!
Another suggestion for an alternative name to "Poisonous Divisional" - a blue-on-blue divisional.
ReplyDeleteNo? Well, I liked it!
The solution could be that you disclaim the "best mode" and then add an extra claim to the "best mode" itself, which has its right to priority, and therefore is safe from being attacked by the divisional.
ReplyDeleteWould certainly be an option during examination, but maybe not after grant, what do you think?
That sort of idea is what led me towards the 'imaginary claims' post following this one, as it is not always possible to disclaim exactly what is required without running into A123(2) issues.
DeleteSo, if I have understood correctly, the issue with "poisonous divisionals" is that a divisional application entitled to priority can be prior art against its parent, if the parent is entitled to priority. This is supposedly due to the effect of Art. 89.
ReplyDeleteHowever, I think this arises out of an incorrect interpretation of Art. 54 as modified by Art. 89. Art 89 refers to "*The* European Patent Application". The antecedent is the European patent application of Art 54(2), which is the European Patent Application to which the question of novelty relates. It is NOT any other European Patent Application.
In my view, any other interpretation is clearly not what was intended, and furthermore is not in compliance with the literal wording of the EPC.
Does that make sense? Does that solve the problem? Or have I missed something?
typo in the first paragraph - should be if the parent is *not* entitled to priority
DeleteI don't think that can be right, because it would mean that European applications having an earlier priority claim could only be used under Article 54(3) according to their application date, not their priority date. What A89 does is qualify what is meant by "date of filing" in A54(2) and (3), which relates to all European applications.
DeleteThat is true, and my interpretation therefore opens up the possibility of double patenting, which Art54(3) is supposed to prevent.
DeleteThat said, double patenting is already an acknowledged possibility if two applications are filed by different people on the same day.
What I think it comes down to is whether you think that one odd result is odder than an alternative odd result. In terms of what the drafters of the EPC actually intended, my instinct (without much research, admittedly) is that they probably intended neither interpretation of Art 54 as modified by Art 89. The odd result of one interpretation (mine) is arguably easier to spot than the other (generally accepted), which I suppose means that the generally accepted interpretation was what was intended. On the other hand, it does lead to an "odder" result (in my view).
I still think that my proposed interpretation is supported by the actual wording of the EPC.