Toxic Priority – A 2013 Epilogue

0.1     There were important developments relevant to the topic of Toxic Priority which achieved high profile in the 12 months to September 2013, and some with a lower profile but perhaps not much less importance in Quarter 4 of 2013. This paper 1 is intended to pull them together to help readers to take an action-oriented view of the implications flowing from this complex topic.

0.2     The developments in question leave Toxic Priority as a proven IP risk. However, as seen at the end of 2013, the risk has a different look and feel than it did for much of 2012. The risk now comes with a different and much more hopeful outlook for patent owners than was previously the case. Conversely, opportunities for those considering challenges to patent validity based on Toxic Priority seem likely to be less frequent and more challenging.

0.3 T1222/11, which deals with partial and multiple priorities under Article 88 EPC although not directly with Toxic Priority as such, is the most significant development.

0.4 T1222/11 deserves optimism as a reaction. However, there are two reasons why that optimism should be guarded. The first is the compound uncertainty as to whether T1222/11 will be subject to an Enlarged Board of Appeal referral, what the EBA will rule if there is and in the meantime the extent to which T1222/11 will be embraced by appeal boards of the EPO (and national tribunals) in well-argued cases.

0.5 The second is that T1222/11 may not be a complete detoxification therapy. It leaves intact the dual conditions of G0002/98, Reason 6.7 for a claim to be treated as having virtual domains of different priority dates: the domains must be limited in number and, in particular, they must be “clearly defined”3. Accordingly, referring to the text box below, a body of P1-dated subject matter contained in one member may form a missile whilst no P1-dated domain enveloping the missile subject-matter can lawfully be envisioned in the claim concerned.

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