EPO appeal T557/13 (re EP0921183B) has led to a referral to the Enlarged Board of Appeal G1/15. The Appeal Board has referred questions to the Enlarged Board of Appeal on the vexed issue of the poisonous divisionals and poisonous priority.
The most alarming aspect of this issue is that according to at least the EPO Board of Appeal in T1496/11 and the opposition decision that lead to T557/13 it is possible for a European divisional application to anticipate its own parent (or vice versa). Although this seems perverse, it appears to be the prevailing view at the EPO.
The situation can arise where an original application narrowly describes something which is claimed more broadly in a later application, which claims priority from the original application. As an example, the original application may describe “screws” and the later application may claim “fastening means”. The broad reference to “fastening means” was not present in the original application so it does not have a valid claim to priority. If a divisional is filed, then a broad claim to “fastening means” lacks novelty because “screws” falls within the scope of “fastening means”, and “screws” is entitled to priority whereas “fastening means” is not. Thus, a parent application claiming “fastening means” is anticipated by its own divisional which discloses “screws”.
In T1496/11 the invention relates to bank notes with security features. The original application disclosed an “optical lens + printed or embossed feature”. This had a priority date of the original application. The parent of the divisional claimed “optical lens + feature” which was only entitled to the filing date of parent. Thus this claim was found anticipated by the divisional application.
In T557/13 the collision is between use of a specific amine/amide based group of substances as a “cold flow improver” in fuel oil in the original application and parent versus a more general group of polar nitrogen compounds claimed in the divisional.
In the writer’s view the problem would be best solved with a universal antidote for poisonous divisionals and poisonous priority. This can be accomplished by treating the claim as having two virtual parts. A first entitled to priority and disclosed in original application/parent/divisional and a second not entitled to priority but not disclosed in original application and hence not needing a claim to priority. In the example above the first part would correspond to “screws” and second part would correspond to “fastening means except screws”. This proposal was set out in an article in the March 2012 edition of the CIPA Journal, and it is hoped that the Enlarged Board of Appeal uses this approach to address the issue.
Thankfully the questions referred to the Enlarged Board have been cast broadly enough (see T557/13 for the questions asked) to potentially deal with the specific poisonous divisional issue and the more general issue of poisonous priority. In fact, the Appeal Board chose to cast the questions more broadly than requested by the parties.
Thus we are now left to hope that Enlarged Board answers in a way such that sense can be restored.