Review of Toxic Priority: The Poisonous Divisions Concept (et al) following EPO Appeal Decisions T1496/11 and T1222/11 and Nestec v Dualit

1. Introduction and overview

1.1 The writer proposed in 20103 the proposition that an EPC application and its divisional(s) may in certain circumstances be mutually anticipatory under Article 54(3) EPC (“whole contents” anticipation). The so-called Poisonous Divisions proposition, filled out in further (co-authored) papers in 2011 and 20124, has a parallel in whole contents conflict between the generationally separated members in a priority group (for which the term Poisonous Priority Documents has been coined).

1.2 The Poisonous Divisionthreat remained legal theory, and subject to scepticism5, pending a decision from a tribunal lending it judicial authority. However, in late 2012, EPO Appeal Board Decision T1496/11(September 2012) was published6, holding claim 1 of a parent anticipated by its divisional. Additionally, the April 2013 judgment of the UK Patents Court in the Nesteccase7 is important both in supporting the Poisonous Priority Documentproposition8 and, it is submitted, the implied support it gives for the Poisonous Divisions proposition as a result of the parallels between the two.

1.3 In addition to T1496/11, there has been another development. T1222/11 (December 2012) challenges the sometimes onerous requirements for claim splitting under Article 88(2)(3) set down by T1127/00(December 2003), and supporting EPO case law developed over the period from late 20019 to late 201210. The broadly softer approach which T1222/11 proposes to this concept, which is outcome determining in both Poisonous Division and Poisonous Priority Document contexts, should make it much easier to detoxify both IP risks if adopted by all appeal tribunals. However, T1222/11 has not changed the law – as opposed to creating with its different opinion the prospect of a superior ruling if the conflict with T1127/00 et alis referred to an Enlarged Board of Appeal.

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