The issue of poisonous divisionals was first raised by Malcolm Lawrence in 2011 a few years ago while he was at HLBBshaw (since rebranded as Avidity). The original paper on the subject was published in issue 2/11 of epi information (which is available here). It has since prompted a lot of discussion, mostly among patent professionals in Europe. I have written about it a few times over the past few years, and have proposed a general solution that is in line with two decisions from the EPO Boards of Appeal. Since the latest development of a referral to the Enlarged Board, there has been nothing further to note on the subject, as we can now wait for the questions to be raised and then answered by the Board before we see what can or should be done about the issue. Or so I thought.
Mr Lawrence, however, thinks there is a lot more to say on the subject, and to prove it has written another article in this month's epi information (available here). This runs to just over 12 pages, and is (as usual) not an easy read. I would not bother to comment, as it doesn't seems to be actually saying anything new, but it does make lots of references to an article I co-wrote in the December 2013 issue of the CIPA journal (a preprint copy of which is available here; the relevant points made are also detailed in these two posts: here and here), which put forward opposing viewpoints on the partial priority issue in light of G 2/98. In essence, the issue boils down to whether you take a narrow or a broad view of the requirement stated in reason 6.7 of G 2/98, which states that multiple priorities are allowed "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters". The narrow view is that there needs to be basis for each of the alternative subject-matters, in a similar way as this would be required if the claim were to be split up into separate claims, and that a limited number would probably not apply to continuous ranges. This view inevitably gets bogged down in all kinds of complications about disclaimers and what is actually disclosed in the as-filed application. The broad view (being my own view), which takes support from the FICPI memorandum cited in G 2/98, is that it doesn't make sense to get involved with basis for amendments and disclaimers because no amendment is necessary, which I pointed out in my earlier post about imaginary claims here. As I stated in my article:
"The only criteria required would be: i) that the claim scope entirely encompasses the priority disclosure; and ii) that there is no issue regarding public disclosures between the priority date and the date of filing of the application. Provided such criteria are met, and of course all other requirements of the EPC are met for the claim scope (in particular Article 83 EPC, as the broader scope would need to be justified by the application as a whole), the validity of a partial priority would defuse any possibility of the priority application, if published, becoming Article 54(3) prior art. This is because the published priority application would not be prior art for the portion of the claim scope having a valid claim to priority, while the rest of the scope of the claim would inevitably be novel. It must be emphasised, however, that this is only applicable when there are no intervening public disclosures within the scope of the later broader claim but outside of the scope of the earlier disclosure, since the only solution to this would be to amend the scope of the later claim."