Poisonous EPC Divisionals – Implications for Risk Management & Opportunistic Advantage

Headnote

An EPC application and its divisional(s) may be mutually anticipatory – in an unexpectedly large number of cases. This previously unrecognized anticipation threat to patent portfolios is based on a fusion of two sound legal principles not previously put together. The proposition, whilst disruptive and counter-intuitive, is supported by G0002/98, G0004/98 and G0001/05.

The threat is inherent in the widely used strategy of filing EPC divisional applications, a strategy which reached a zenith in the approach to the change in procedural law for divisionals which occurred last October. The threat has implications along several risk management and opportunity axes.

Executive Summary

We have identified and researched a highly significant anticipation threat to patent portfolios posed by the widely used strategy of filing EPC divisionals. This threat has not been recognized previous to our work.1,2 Its discovery points to a common, significant (we suggest probably universal) omission in strategic planning of divisional filings, and changes the landscape for IP risk management. We have already applied the threat in EPC oppositions.

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 (almost always so). Our proposition is based on a novel fusion of legal principles not previously put together:

• The first is the familiar principle that two applications come into anticipatory conflict when matter claimed in one is disclosed in the other with benefit of an earlier priority date but without prior publication (so called “whole contents“ anticipation)
• The second is far from familiar but is key to the proposition, namely that the two applications may, in accordance with the EPC, be any two applications within an EPC family comprising a parent and all its divisionals.

The key principle rejects the assumptive, and we suggest normally unconscious, idea that divisionals are special and to be treated specially for the purposes of substantive law. We identify a clear statutory basis, with authoritative and philosophical support, for concluding that this idea is misconceived, incorrect and of no effect.