Toxic Divisionals at EPO

1
Toxic Divisionals at EPO

• The Potential Problem of Filing an EP Divisional
  if the Parent includes more Content than a Non-EP
  such as a Chinese/Korean/Japanese Priority
  Application

2
Toxic Divisionals at EPO

• Toxic Divisionals are a hot topic in EP at
  present
• Why?
• Because filing of a divisional may destroy
• novelty of a claim of the parent

3
Toxic Divisionals at EPO
Constellation 1 for claiming priorities
one priority claimed
L1 Later Appl. 1 Claim A
P1 Priority Appl. 1 Disclosure A
Priority no problem
Max. 12 months
Time
4
Toxic Divisionals at EPO
Constellation 2 for claiming priorities
two priorities claimed

• P1
• Priority Appl. 1
• Disclosure
• A

L2 Later Appl. 2
P2 Priority Appl. 2 Disclosure AB
Priority no problem for Claim A Which priority
for Claim AB?
Claim A
Claim AB
Max. 12 months
Time
5
Toxic Divisionals at EPO
Constellation 3 for claiming priorities
two priorities claimed
P1 Priority Appl. 1 Disclosure A
L3 Later Appl. 3

• P3
• Priority Appl. 3
• Disclosure
• A and B as
• alternatives

Priority no problem for Claim A Which priority
for Claim A or B?
Claim A
Claim A or B
Max. 12 months
Time
6
Toxic Divisionals at EPO
Constellation 4 for claiming priorities
one priority claimed
P1 Priority Appl. 1 Disclosure A
L4 Later Appl. 4 Disclosure A, A Claim A A
is a genera- lization of A
Which priority for Claim A?
Max. 12 months
Time
7
Toxic Divisionals at EPO
Constellation 5 for claiming priorities
two priorities claimed
P1 Priority Appl. 1 Disclosure A
P4 Priority Appl. 4 Disclosure B
L5 Later Appl. 5 Disclosure A, B, C, D,
E Claim C C is a genera- lization cover- ing A
and B
Which priority for Claim C?
Max. 12 months
Time
8
Toxic Divisionals at EPO

• Article 54 EPC
• An invention shall be considered to be new if it
  does not
• form part of the state of the art. 
• (2) The state of the art shall be held to
  comprise everything
• made available to the public by means of a
  written or oral
• description, by use, or in any other way, before
  the date of filing
• (priority date, Art. 89 EPC) of the European
  patent application. 
• (3) Additionally, the content of European patent
  applications as
• filed, the dates of filing of which are prior to
  the date referred to
• in paragraph 2 and which were published on or
  after that date,
• shall be considered as comprised in the state of
  the art.

9
Toxic Divisionals at EPO
Art. 54 (3) EPC
one priority claimed
P1 Priority Appl. 1 Disclosure A
PA1 Prior Art EP Appl. 1 Disclosure A
L4 Later EP Appl. 4 Disclosure A, A Claim
A A is a genera- lization of A
If priority claim valid PA1 not relevant If
priority claim not valid PA1 destroys novelty
Max. 12 months
Time
10
Toxic Divisionals at EPO

• The problem with toxic divisionals in the EPO is
• generated by
• denying partial priorities in claims
• including generalized features,
• and
• the lack of rules preventing self-collision

11
Toxic Divisionals at EPO
Constellation 4 with divisional
one priority claimed
D1 Divisional EP Appl. 1 Disclosure A, A, B,
B
P1 Non-EP Priority Appl. 1 Disclosure A
L4 Later EP Appl. 4 Disclosure A, A, B,
B Claim A A is a genera- lization of A
Max. 12 months
Time
12
Toxic Divisionals at EPO
Constellation 4 with divisional
If there is no partial priority for A in claim to
A, as usual in EPO, disclosure of A in D1
destroys novelty of claim to A of L4
one priority claimed
D1 Divisional EP Appl. 1 Disclosure A, A, B,
B
P1 Non-EP Priority Appl. 1 Disclosure A
L4 Later EP Appl. 4 Disclosure A, A, B,
B Claim A A is a genera- lization of A
Deemed filing date of EP D1 for Disclosure A Ar
t 54 (3) EPC
No partial priority under EPO case law for A
within claim to A A is specific of A and thus
destroys novelty of claim to A
Max. 12 months
Time
13
Toxic Divisionals at EPO
Constellation 5 with divisional
two priorities claimed
P1 Non-EP Priority Appl. 1 Disclosure A
D2 Divisional EP Appl. 2 Disclosure A, B, C,
D, E

• L5
• Later EP appl. 5
• Disclosure
• A, B, C, D, E
• Claim C
• C is a genera-
• lization cover-
• ing A and B

P4 Non-EP Priority Appl. 4 Disclosure B
Max. 12 months
Time
14
Toxic Divisionals at EPO
Constellation 5 with divisional
two priorities claimed
P1 Non-EP Priority Appl. 1 Disclosure A
D2 Divisional EP Appl. 2 Disclosure A, B, C,
D, E

• L5
• Later EP appl. 5
• Disclosure
• A, B, C, D, E
• Claim C
• C is a genera-
• lization cover-
• ing A and B

P4 Non-EP Priority Appl. 4 Disclosure B
Again, no partial priority under EPO case law for
A and B within claim to C
Max. 12 months
Time
15
Toxic Divisionals at EPO
Constellation 5 with divisional
If there are no partial priorities for A and B in
claim to C, as usual in EPO, disclosures of A/B
in D2 each destroy novelty of claim to C
two priorities claimed
P1 Non-EP Priority Appl. 1 Disclosure A
D2 Divisional EP Appl. 2 Disclosure A, B, C,
D, E
Deemed filing date of EP D2 for Disclosure A Ar
t 54 (3) EPC
P4 Non-EP Priority Appl. 4 Disclosure B
Deemed filing date of EP D2 for Disclosure B Ar
t 54 (3) EPC

• L5
• Later EP appl. 5
• Disclosure
• A, B, C, D, E
• Claim C
• C is a genera-
• lization cover-
• ing A and B

Max. 12 months
Time
16
Toxic Divisionals at EPO

• Toxic Divisionals - Example T 1496/11
• Claim 1 claimed a security device without
  restriction to a printed or embossed feature

17
Toxic Divisionals at EPO

• Toxic Divisionals - Example T 1496/11

18
Toxic Divisionals at EPO

• Thank you for your attention