Executive Summary
We have identified and researched a highly significant anticipation threat to patent portfolios posed by the widely used strategy of filing EPC divisionals. This threat has not been recognized previous to our work. Its discovery points to a common, significant omission in strategic planning of divisional filings. We have already applied the threat in EPC oppositions.
We postulate the disruptive original proposition that an EPC application and its divisional(s) may be mutually anticipatory where the subject-matter disclosed is materially the same (as is almost always so). Our proposition is based on a novel fusion of two legal principles which have not previously been put together:
The first is the familiar principle that two applications come into anticipatory conflict when matter claimed in one is disclosed in the other with benefit of an earlier priority date but without prior publication (so-called “whole contents” anticipation)
The second is far from familiar but is key to the proposition, namely that the two applications may, in accordance with the EPC, be any two applications within an EPC family comprising a parent and all its divisionals.
The key principle rejects the assumptive, and we suggest normally unconscious, idea that divisionals are special and to be treated specially for the purposes of substantive law. We identify a clear statutory basis, with authoritative and philosophical support, for concluding that this idea is misconceived, incorrect and of no effect.
We propose IP strategy solutions in two separate dimensions based on SWOT analyses. In one dimension, we propose solutions in the context of proprietor interests: (i) insertion of a prophylaxis into strategy formulation when planning division and (ii) solutions for problem contexts already created. In the second dimension, we look opportunistically at the interests of potential patent opponents.
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