However, the European Patent Office’s (EPO) boards of appeal held, in T1496/11, that a divisional application may, in certain circumstances, be considered to be a co-pending patent application for the purpose of assessing novelty of its own parent application (or vice versa). Tese applications can be described as ‘self-colliding’ (also commonly referred to as ‘poisonous divisionals’).
Te concept of self-collision occurs when a broad (generic) claim in the parent application is found not to have a valid priority, but a related divisional application describes a specific (narrower) embodiment that does possess a valid priority. Te invalid priority of the parent application in this situation means the effective date for the assessment of patentability of the parent application is no longer the priority date, but instead changes to the later filing date. In parallel to this, the divisional application describes narrower subject matter that retains a valid priority date, thereby resulting in the divisional application in effect being ‘filed earlier’ than its own parent and, consequently, available as a co-pending application for the assessment of novelty.
Te damage due to the self-collision then occurs because the narrower subject matter of the divisional is a wholly encompassed specific example of the broader embodiment of the parent and, as a result, destroys the novelty of the broader claim in the parent application.
Self-collision can also apply to a first priority- forming application being novelty-destroying to a later application that claims priority from the first application. However, that is provided that the later filed application is found to have an invalid (or partially invalid) priority claim and seeks to protect a broader claim scope than a specific example disclosed in the priority application. It is worth noting that this concept applies to priority- forming and priority-claiming applications only to the extent that they are both filed in the same territory (eg, both are European applications). A typical example of self-collision would include a disclosure of a single antibody to a specific target (and which has a valid priority) in a divisional, whereas the claim of the parent that loses priority is directed more generally to binding molecules to the same specific target. Applying the logic of T1496/11 would lead to the binding molecules of the parent lacking novelty over the antibody of its own divisional.
Before T1496/11, and despite some academic consideration of the hypothetical possibility of self-collision occurring, it had never been seriously contemplated that a patent office would apply the concept. Terefore, the outcome of T1496/11 had, at least initially, worried many
European practitioners because it placed a significant number of European applications in the potentially impossible-to-overcome situation of becoming prior art against a related application that had no possibility of a valid priority claim. However, European practitioners have, relatively quickly, adapted their patenting strategies to limit the potential impact of self- collision. For example, preventing publication of a same-country priority application will prevent a priority-forming application destroying the novelty of the priority-claiming application;
and ensuring that all commercially-significant claims filed at the EPO have a valid priority claim will prevent self-collision between parent and divisional.
Furthermore, the potential tidal wave of objections based on T1496/11 from the EPO itself has not come to pass. EPO examiners, whether intentionally or not, do not appear to have latched on to this decision as a means of objecting to one or more related patent applications in a family. Attacks using self-collision have, however, rapidly become popular in opposition practice, with
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44