Self-Represented Applicants at the UK IPO again

I have written before about self-represented applicants at the UK IPO, commenting that the IPO tend to much more accommodating with such applicants than with those represented by agents. I mentioned at the time that I was not sure this was necessarily a good thing, as we all have to follow the same rules regardless of who we are. Going the extra mile for applicants who have difficulty following the rules may be very admirable from a public service point of view, but in the end is it really worth it? This thought was prompted again by a recent decision from the IPO relating to a request for reinstatement under section 20A, BL O/305/13 (Roy Henry Booker).

Mr Booker filed his application, GB1014537.3, on 1 September 2010, claiming an invention relating to hazard warning lights being made separate from indicator lights so that both could be used. Mr Booker paid the application and search fees, and a search report issued in January 2011, citing several documents (this one, for example, pictured left), suggesting that the invention was not new. The search report also, rather unusually (and possibly a taster of things to come), indicated that exploitation of the invention would appear to be contrary to UK legislation, specifically Schedule 8 of the Road Vehicles Lighting Regulations 1989.

Mr Booker called the Office to query the search results, and was advised by the examiner that it might be best to abandon the application rather than requesting substantive examination. The application then proceeded along its normal course, publishing on 8 February 2012 as GB2482567A. As usual, the Office sent a letter reminding the applicant of the need to request examination, which was due by 8 August 2012. No request was filed, with the result that the Office sent a letter on 28 November 2012 informing the applicant that the application had lapsed. Nevertheless, Mr Booker continued calling the examiner who, after several calls, eventually gave in and sent a letter on 29 January 2013 with a fairly detailed assessment of the application, indicating that it basically had no hope of being granted and that Mr Booker should therefore give up (I paraphrase somewhat). Mr Booker nevertheless requested reinstatement, but not until 15 April 2013. The Office offered its preliminary view on 3 May 2013 that the case for reinstatement had not been met, giving Mr Booker the opportunity of a hearing.

The main issues the hearing officer had to deal with was whether the reinstatement request was made in time, and if it was whether the failure to comply with the examination request deadline was unintentional. Mr Booker's explanation was that he was wrongly advised by the examiner not to proceed, and he spent such a long time researching why his application was viable that he missed the deadline. The hearing officer accepted that Mr Booker had been confused by the letters from the Office, and considered that he only really became aware of what needed to be done when he telephoned the Office on 19 February 2013 and was told by a formalities officer what needed to be done and by when. The two month deadline under Rule 32(2)(a) was therefore considered to be met. As for whether the failure to comply was unintentional, the hearing officer accepted that Mr Booker did not file the examination request because he simply forgot to do so. The failure was therefore unintentional. As a result, the hearing officer accepted the request and ordered the application to be reinstated.

This case seems to me to illustrate why it is not necessarily a good thing for the IPO to be so accommodating with self-represented applicants. The examiner clearly thought he was trying to help by going way beyond what was actually required, but ended up creating more problems for himself and others in doing so. My opinion, for what it is worth, is that examiners should really stick to the task of searching and examining applications and not get too involved in trying to help out applicants.

Partial priority - a referral to the Enlarged Board?

Following my earlier post here about the (in my view) flawed judgment of Arnold J in the Nestec v Dualit coffee machine case, there have been further interesting developments on the corresponding European patent EP2103236 (register: 09007962.5). The matter is currently waiting to be heard before the EPO Board of Appeal in case T 1674/12, after a decision by the opposition division upholding the patent in amended form was appealed by the opponents. The points to be considered are similar to those that were considered in the Patents Court, and there is certainly now a large amount of overlap between the cases. Oral proceedings in the European case are scheduled for 9 October 2013 which, if the information here is correct (confirmation here; thanks to Joe) will happen before the UK Court of Appeal gets to hear the arguments on the appeal from Arnold J's judgment.

Each side in the European case have now submitted their arguments, the latest being those from Nestec, provided on 15 July 2013 countering those of the opponents. In brief, as for the EP(UK) case, the arguments primarily concern whether the claims of the patent are entitled to priority, and whether they are valid over an alleged prior public use. The main point, at least as far as I am concerned, is that concerning priority, as regular readers of this blog will already know.

The main issue over priority is whether a broader definition of a feature in the patent claims is entitled to priority and, if not, whether this would make the claim anticipated by the published priority application. The feature relates to whether a housing for receiving a capsule is located in a first or second part of the device. The application claimed the housing without stating where it was located, disclosing that it could be in either or both, whereas the priority application only disclosed that the housing was in the second part. The question is then whether the claim is entitled to partial priority for embodiments where the housing is in the second part, or if the claim is not entitled to priority at all. Arguments have been provided by the opponents for the latter case (of course), whereas Nestec have argued that the claim would be entitled to partial priority. Interestingly, both arguments derive from different interpretations of G 2/98, leaving open the distinct possibility of a further referral to the Enlarged Board.

G 2/98, which has been raised many times in the various discussions relating to the Nestec case and the more general poisonous priority/divisionals issue, considered the question of whether a claim could be entitled to more than one priority date. The board referred to a memorandum that led to the introduction of Article 88 EPC, which explicitly allows a single claim to have more than one priority. The relevant parts of G 2/98, which are worth repeating in full to avoid any confusion, are points 6.5 to 6.7:

6.5 According to the memorandum, in evaluating whether there is any justification for claiming multiple priorities for one and the same claim of an application, a distinction has to be made between the following situations: (i) "AND"-claim (ii) "OR"-claim

6.6 As regards the "AND"-claim (point 6.5(i) supra), it is held in the memorandum that where a first priority document discloses a feature A, and a second priority document discloses a feature B for use together with feature A, "then a claim directed to A+B cannot enjoy a partial priority from the first priority date, because the invention A+B was disclosed only at the date of the second priority document". From this it clearly follows that, according to the legislator, multiple priorities cannot be claimed for an "AND"-claim. Hence, the application of the so-called "umbrella"-theory (according to which the feature A in the claim directed to A+B would enjoy a partial priority from the first priority date, with the result that the feature A could under no circumstances become state of the art in relation to the claimed invention A+B) is to be disregarded. Besides, the application of the "umbrella"-theory would manifestly be at variance with Article 88(4) EPC.

6.7 As regards the "OR"-claim (point 6.5(ii) supra), it is held in the memorandum that where a first priority document discloses a feature A, and a second priority document discloses a feature B for use as an alternative to feature A, then a claim directed to A or B can enjoy the first priority for part A of the claim and the second priority for part B of the claim. It is further suggested that these two priorities may also be claimed for a claim directed to C, if the feature C, either in the form of a generic term or formula, or otherwise, encompasses feature A as well as feature B. The use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2), second sentence, EPC is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters.

The argument in this case is all about point 6.7, in particular whether a broader claim can be considered to be of the "OR" type if it encompasses a narrower priority disclosure. On the face of it, it seems obvious that it would, given that the examples in the memorandum include broadening ranges and applications. There have, however, been decisions by the EPO Boards of Appeal that have taken opposing views on what is meant by "a limited number of clearly defined alternative subject-matters".

T 1877/08, which was cited by the opponents, says that a broader claimed range cannot be given priority to a narrower range, even partially, because G 2/98 requires "separable alternative embodiments" (point 2.4).

T 1222/11, cited by Nestec, says that a broader generic formula can have partial priority because the clearly defined alternatives are the narrow formula and the rest of the scope of the claim (point 11.5.5).

Nestec have therefore argued that, based on T 1222/11, the claim is entitled to partial priority for the housing being in the second part, whereas the opponents argue, based on T 1877/08, that the claim is not entitled to priority at all.

In my view, the interpretation based on T 1222/11 is clearly the right one, not least because the memorandum referred to in G 2/98 includes examples of this type as ones where partial priority would apply. It would also avoid the (also in my view) absurd outcome that the patent would be found to lack novelty over its own priority document. The EPO board in this case will clearly have to decide one way or the other and they are led in two opposing directions by previous T decisions. I therefore see a referral to the Enlarged Board being a distinct possibility, unless the Board consider T 1877/08 (or T 1222/11 of course, as pointed out by the first commenter below) to be a 'rogue' decision that should be ignored. The question to be referred might be of the following form (thanks to the commenter "Joe", who seems to have already thought of it):

“Can a generic term in a claim, encompassing species having multiple priority dates, be regarded as defining clearly defined alternative subject-matters (as defined in G2/98) so as to be compliant with Art. 88(2), second sentence?”

Would this resolve the issue? I hope so.

Nestec v Dualit - a seriously flawed judgment?

A lot has been written about the recent case of Nestec v Dualit, which seems to have brought the idea of "poisonous priority" to UK patent law in a similar way to the "poisonous divisionals" idea in European patent law. The issue centres around whether an application that claims more broadly than its priority application discloses can be anticipated under Article 54(3) / Section 2(3) if the priority application itself publishes. This concept has been much discussed, and I have written about my own solution to the problem here.

What has not been discussed much, however, is whether the conclusion arrived at by Mr Justice Arnold in the case was actually correct. Having looked in more detail at the judgment, I have come to the conclusion that it is seriously flawed on the priority point.

Claim 1 of the patent, as sought to be amended (by the underlined parts) by Nestec, and as broken down into integers by Arnold J, reads:

[1A] Extraction system comprising a device for the extraction of a capsule and a capsule (16) that can be extracted in the device; 

[1B] the capsule (16) comprising a guide edge in the form of a flange, the device comprising

[1C] - a first fixed part (2),

[1D] - a second part (3) which is moveable relative to the first part, 

[1E] [-] comprising a housing (4) to receive the capsule and defining, in the closed position of the moveable part against the fixed part, a position for extracting the capsule on an axis (25) in said housing, 

[1F] - a part for insertion and positioning comprising guide means (6,7) for the capsule arranged so as to insert the capsule by gravity and position said capsule in an intermediate position; 

[1G] the guiding edge being received in the guide means (6,7); 

[1H] said guide means being insertion slides permitting the engagement of said flange; 

[1I] - a beverage-delivery system (19, 53), 

[1J] said second moveable part (3) being configured to displace the capsule (16) from the intermediate position to the extraction position when the device is closed, characterised in that 

[1K] the guide means (6, 7) comprise stop means (20) configured to retain the capsule (16) in an intermediate position, in a manner which is offset to the axis of the capsule in the extraction position; 

[1L] the flange bearing against said stop means in the intermediate position, and in that 

[1M] the second, moveable part (3) receives the capsule to displace it from the intermediate position to the extraction position on the axis (25) of the capsule in the extraction position in said housing (4) 

[1N] so that, when moved, the moveable part acts on the capsule to move it downwards, 

[1O] the flange of the capsule passing below the stop means (20), 

[1P] and to push it along the axis (25) of said moveable part into its extraction position.

The key part of the judgment relating to the priority question is in paragraphs 95 to 104. In this, Arnold J notes that claim 1 of the patent covers certain arrangements, outlined as: i) the housing receiving the capsule being contained in either the second part (integer 1D) or the fixed first part (integer 1C); and ii) the capsule being offset, inclined or both relative to the extraction axis. Arnold J's view was that, because the priority document did not disclose these different arrangements, which were only found in the later application, claim 1 lacked a valid claim to priority.

On the face of it, this seems to be plausible. However, as any first year trainee will know, there is a huge difference between what a patent claim covers and what it states. The claim in question makes no mention of the housing being in either of the parts [perhaps not: see update below], nor does it require the capsule to be anything other than being offset to the extraction axis. The possibilities of the different ways in which the housing and the capsule could be arranged were therefore only additional possibilities that were added in the later filing. In normal circumstances this would not affect any priority claim at all, as it is perfectly normal practice to add features that might provide further fall back positions in a later priority-claiming filing. Arnold J, however, seems to think otherwise. If correct, this would be extremely worrying as it would result in a substantial proportion of existing patent applications and patents lacking a valid priority claim merely because additional options were added in the later filing, even if claim 1 was left entirely unchanged. Am I missing something, or has Arnold J got it very very wrong?

Update 27 June 2013: To pre-empt any eagle-eyed readers, I have noticed that I may indeed have missed something, although it doesn't affect my conclusion. The addition of the word "comprising" to the start of integer 1E indicates that the housing is part of the second part, not the first part. This would only raise an issue of priority if this could not be unambiguously derived from the priority application, and it was agreed that this arrangement was in fact disclosed in the priority application (see paragraph 96). However, the other point relating to the capsule being possibly also inclined is, I think, still valid.

HTC v Apple - A broader signpost for patentability

Patentability under UK and European law has been something of an ongoing theme of mine for a few years, particularly in relation to patents for software or business methods (although I have been known to occasionally stray into other areas such as stem cells). The last time I visited the issue in any great detail was in May 2010 when the EPO Enlarged Board decision in G 3/08 was issued (see here), a few months after I summarised the position in the UK and Europe in a 'where are we now' style here, and correctly predicted the outcome of G 3/08. Since then, the issue has been largely left for the EPO to get on with what they were doing already (principally based on the reasoning in Comvik, T 641/00), while the UK approach has developed from the flawed Aerotel/Macrossan judgment, followed and augmented by Symbian, both from the UK Court of Appeal. There have been other judgments in the UK that have tinkered with how the Aerotel four step test should be viewed and how to judge whether something is technical, such as Halliburton (see here for my comments) and AT&T/CVON (see here for some interesting comments), but nothing that has significantly altered the way patentability is assessed according to UK law.

As a result of the case law in the UK not really evolving beyond Symbian, reading through the decisions from the IPO relating to Section 1(2) each month (which I do for the CIPA Journal out of the goodness of my heart) has become something of a mind-numbing process. Seeing the same reasoning and the same relentless refusals time and time again can become a bit boring, so I try to avoid reporting too many of them. Something that seems to turn up every time in a decision relating to patentability is the list of 'signposts' from AT&T/CVON. These were intended to be used as a check to see whether there was any relevant technical effect (bearing in mind the fourth step of the Aerotel test, which Symbian indicated should be taken together with the third), and were of course not meant to be exhaustive, let alone binding. They have, however, been used fairly systematically by the UK IPO to determine the presence of anything technical. The signposts, as set out by Lewison J (see paragraph 40 of the judgment) are as follows:

i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer; 

ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run; 

iii) whether the claimed technical effect results in the computer being made to operate in a new way; 

iv) whether there is an increase in the speed or reliability of the computer; 

v) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

The fourth signpost is often used by applicants (or more usually their attorneys) claiming a technical effect, where there is at least an arguable case for an improvement in efficiency obtained as a result of a new computer program. UK IPO hearing officers, however, tend to view this signpost quite narrowly, and usually only allow such efficiencies to be relevant if they are somehow tied to something outside the normal operation of software. Simply making a piece of software more efficient is usually not enough to point towards an increase in the speed or reliability of the computer, despite what Symbian might have suggested.

A recent judgment from the UK Court of Appeal, in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 might help in allowing arguments relating to the fourth signpost to be given more weight. The case related to European patents EP2098948 (application number 09154313.2) and EP1964022 (application number 06846405.6), both of which were found by Floyd J in the Patents Court to be invalid (see here). EP1964022 related to the well-known "slide to unlock" feature (shown in the drawing on the right, taken from the patent) used in Apple's iPod, iPad and iPhone products. This was found by Floyd J to be either not novel or to lack an inventive step over the prior art.

EP2098948 was also found to be invalid, although for relating to excluded subject matter, in particular for being a computer program as such. This patent related to how multi-touch gestures were processed so that recognised multi-touch gestures could be directed accordingly to software elements in the device. Apple argued that the invention met all the signposts of AT&T/CVON, meeting the fourth one because the invention simplified application coding. Floyd J disagreed, and considered that the invention was concerned with the way in which software operated on the data relating to touch events, which did not make the computer operate in any new way and there was no evidence of an increase in speed or reliability. On appeal, however, both Kitchin LJ and Lewison LJ (as he now is) considered that the narrow interpretation placed on the fourth signpost was too restrictive. Lewison LJ reflected on the signposts that he formulated and thought that they "may have been expressed too restrictively", preferring the judgment of Mann J in Gemstar-TV Guide v Virgin Media, who said "It would be a relevant technical effect if the program made the computer a better computer in the sense of running more efficiently and effectively as a computer" (paragraph 42). Kitchin LJ also considered that they were "useful signposts, forming as they do part of the essential reasoning in many of the decisions to which we must look for guidance. But that does not mean to say they will be determinative in every case. I have also had the benefit of reading in draft Lewison LJ's judgment in this case. I respectfully agree with that too, including his observation that, in the light of Mann J's judgment in Gemstar-TV Guide International Inc v Virgin Media Ltd [2009] EWHC 3068 (Ch), [2010] RPC 10, he would adopt as his fourth signpost the less restrictive question whether a program makes a computer a better computer in the sense of running more efficiently and effectively as a computer. Indeed, this is, to my mind, another illustration of the still broader question whether the invention solves a technical problem within the computer" (paragraph 51).

I now eagerly await the first decision from the IPO where this newly broadened signpost has been properly taken into account. Although the change will probably not have a great effect on extending the boundary of what is considered patentable for computer-implemented inventions, it will certainly result in some greater consideration at the IPO of what constitutes a technical effect according to UK law.

Faster patents from the UK IPO but not the EPO

Last month the UK IPO announced a consultation on a new "superfast service" for processing patent applications, proposing that a patent could be granted as quickly as 90 days from filing if the applicant paid a fee in the region of £3.5 to £4k. Apart from the new fee, the only real differences over existing ways of accelerating applications (for example by using the Green Channel) are that: i) no reason would be required for acceleration; and ii) the usual 3 month period for third party observations after publication would be shortened to 1 month. As far as the UK goes, these proposals are not particularly ground-breaking, and the only objection I would have is that the high fee will probably put most applicants off, resulting in very little use of the service. There may, however, some cases where applicants really do need to get a patent granted quickly and cannot afford to wait for the application process to take its usual course.

If the UK IPO is happy to grant applications quickly, then why not the EPO? After all, the end result as far as protection in the UK is concerned is (or should be) the same. This is where one of the differences between the UK Patents Act 1977 and the European Patent Convention comes into play, and it comes down to that pesky Article 54(3) EPC again (corresponding to Section 2(3) in the UK Act).

If an application is searched and examined earlier than 18 months from its filing date, there is a possibility that some prior art might be missed, because Article 54(3) / Section 2(3) prior art will only make itself fully known after this date. Under UK law, this does not need to hold up grant because any missing prior art  can be searched for by the examiner doing a 'top up' search after grant. If anything relevant does come up, the examiner can offer the proprietor the opportunity to comment and amend as required, under Section 73(1) (although the downside is that by that stage the only amendments allowed are narrowing ones). The EPC, however, has no corresponding provision because, once a patent has been granted, it is no longer the responsibility of the EPO, except if an opposition is filed or in the limited circumstances of a request by the proprietor for limitation or revocation. Therefore, even though Article 93(2) suggests that grant might occur earlier than 18 months from the date of filing this does not in practice happen. I would, incidentally, be very interested to be pointed towards anything that would disagree with this.

This difference in the ability to speed up prosecution has been confirmed by T 1849/12 (in German only; see K's Law here for an English summary and discussion), in which the EPO board of appeal agreed with the examining division's decision to refuse the applicant's request to have their application granted earlier than the 18 month publication date. Their reason was that the examining division was required to come to a decision on grant based on all the requirements of the EPC, i.e. including Article 54(3). Only when the ED was of the opinion that all requirements were fulfilled could the application proceed to grant.

The conclusion seems to be that, at least as far as choosing between getting a patent from the UK IPO and EPO goes, you can either have slow and sure or fast and loose. Which would you prefer?

Imaginary claims and conflicting divisionals

After my last post about the "poisonous divisionals" hypothesis, I have been thinking about the issue a bit more, helped by some very useful comments on the post, as well as on other articles about the issue. I now have what I think is an answer that may make the problem go away.

For anyone who is not yet aware (and for those who are, simply skip to the next paragraph), the issue relates to a European patent application having a claim that is broader than anything in the priority application becoming invalid through lack of novelty once a divisional application is filed and published, because the divisional application becomes prior art under Article 54(3) EPC as a result of the claim not being entitled to priority. This strange result comes from a literal interpretation of the wording of Article 54(3), which makes no distinction between applications that may be related to the one in question and other applications (or indeed, as might be argued, the application itself).

My solution to the problem relates not to some unwritten rule that divisionals and priority documents should not be considered to be prior art (which some would argue), but to Article 88(2) EPC, which states:

"(2) Multiple priorities may be claimed in respect of a European patent application, notwithstanding the fact that they originated in different countries. Where appropriate, multiple priorities may be claimed for any one claim. Where multiple priorities are claimed, time limits which run from the date of priority shall run from the earliest date of priority".

The simplest way of thinking about a claim having more than one priority would be where the claim contains alternatives, in which case it can be easily divided into two or more separate claims. Some alternatives might have a valid claim to priority, while others might not. Let's say a claim is directed to a widget made of copper or iron, and the priority document discloses only copper. The claim is entitled to priority only for the copper widget, but the claim can be rewritten anyway to: i) a widget made of copper; and ii) a widget made of iron. The first claim would be entitled to priority, and therefore not at risk if a divisional is filed, while the second lacks a valid priority claim but is novel over the priority disclosure, so would also not be at risk.

No distinction in Article 88(2) is made regarding the form the claim takes. More complicated forms of claims can therefore also have multiple claims to priority, although separating them out may be more tricky. To take a slightly more complicated example, let's say claim 1 is directed to a widget made of metal, and the priority document only discloses widgets made of copper. The claim cannot easily be divided into two from the wording alone, but can at least theoretically be considered to be two claims: i) a widget made of copper; and ii) a widget made of a metal other than copper. These claims together have the exact same scope as the original claim. As before, the first claim is entitled to priority and is therefore not at risk if a divisional is filed, while the second claim is novel over the priority disclosure and is therefore also not at risk.

Some of the discussions about how to tackle the conflicting divisionals problem focus on what kinds of disclaimers might be used to get around the problem in this kind of way. In my view this misses the point, although the idea does get part of the way there. The concept that a broad claim can theoretically be divided into two parts, one of which is entitled to priority and the other which is inevitably novel over the priority disclosure, is itself sufficient to overcome the problem even if the exact form of wording is not easily derived from the application. This is because the collective scope of the resulting two imaginary claims would be exactly the same as the original claim, and Article 88(2) EPC indicates that there is no need to actually rewrite the claim to be two separate claims. There is therefore no need to find the right form of wording to satisfy added matter requirements because no amendment is needed.

I see a nice parallel here with mathematics, where imaginary numbers are of great use in solving real problems, for example in finding the roots of a cubic function or in modelling electrical circuits in response to time-varying signals. Just because there is no real solution to the square root of -1 does not mean that an imaginary solution (usually termed i) cannot be a useful way of looking at a particular problem where this might arise. In the same way with problematic claims, just because there may not be a way of rewriting the claim as two parts, each of which would be valid for different reasons, does not mean that considering such imaginary claims cannot be a useful way of solving the problem of conflicting divisionals.

As usual I may, of course, be wrong. Any thoughts on the issue would be welcome.

Update 25 May: A commenter has pointed me to T 1222/11, which seems to support the idea. See point 11.5.5 in particular.

Update 15 June: There is an interesting discussion on the IPKat here on the related issue in the Nestec v Dualit case.

Update 31 November 2016 / 7 February 2017: I have been proved right! See my posts on the outcome of G 1/15 here and here.

"Poisonous divisionals" hypothesis confirmed

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.