A Strategic Remedy for Toxic Priority in Divided Families

A Strategic Remedy for Toxic Priority in Divided Families

Abstract

We propose in an amicus curiae brief in Appeal G0001/15 a new purposive interpretation of EPC’s Whole Contents anticipation provisions. This interpretation reads into those provisions an Exhaustion Concept and a Survivorship Concept which partially, but substantially, disapply those provisions to divided families. The two concepts operate co-ordinately, are independently effective and are well-grounded in the rules of purposive construction based in part on the contextual background documentation to EPC. Our approach has the strategic result that root applications are natural perennial survivors of Whole Contents conflicts between them and their descendants – which were previously proposed to be fatal. One dimension of Toxic Priority by Division, arguably its most important, is thus removed. Its removal potentially has the collateral benefit of substantially simplifying the management of the second dimension of Toxic Priority by division – Whole Contents anticipation of divisionals by citation of their family’s root application. Over and above this, for instances where a root application ceases before official publication, we also propose a Surrogacy Concept under which a hierarchically next member of the divided family, filed with the benefit of content management legally impossible for the root application, takes the hierarchical place of the latter. Whilst timing of its deployment is critical and although such content management is likely to prove challenging, this additional concept should offer opportunities for tactical management of Toxic Priority threats resulting from exposure to root applications of other divided family members. None of our proposals change our current views on other measures to manage Toxic Priority by Division. These include use of domain structures to take advantage of EPC’s partial/multiple priority provisions and the exclusion from priority-claiming applications of priority document content likely to fail a strict clarity test. Whilst our propositions introduce a legally reasoned basis to support outcome-oriented commentary elsewhere, they are contrarian and an Opinion from the Enlarged Board of Appeal of the EPO is awaited, hopefully this autumn.