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IP Alert
IP Alert: Later-Filed Divisional Application Can Destroy Novelty of Parent Application in the European Patent Office

December 4, 2012

The Technical Board of Appeal (“the Board”) of the European Patent Office (EPO) recently determined that a divisional application can be applied as prior art against its own parent application under certain circumstances. The decision is no. T 1496/11, entered September 12, 2012.
 
Generally, under European Patent Convention Article 54(3), the EPO may apply as prior art any published European patent application that has a priority date earlier than the priority date of an application under examination. For instance, an EPO patent reference having a filing date of May 3, 2010, and a publication date of November 17, 2011, would be applicable as prior art against a patent application having a filing date of November 15, 2010. Although the filing date of the second application precedes the publication date of the reference, the effective date of the reference is deemed to be its filing date, and not the later publication date. 
 
The Board’s decision concerned a European application directed toward a “security document” that incorporated an “optical lens.” The application claimed priority to an earlier-filed Australian application. The Board reviewed the claim language and evaluated it as against the disclosure of the provisional application, and determined that the priority application disclosed an “optical lens” only in combination with a “printed or embossed feature.” The claim under examination specified an “optical lens,” but did not specify a “printed or embossed feature.” Under the standards of the EPO, the Board held that the claims were not entitled to a basis in the priority document because the claims could be practiced with or without using a “printed or embossed feature.” The Board also found a second point on which it opined that the claims were not adequately supported.
 
The applicant had filed a divisional application, and the Board then considered whether it could apply the divisional application as prior art. The Board determined that the salient disclosure of the divisional application was identical to that of the priority application, and found that it was free to apply the divisional application as prior art against its own parent application. Put another way, the Board held that the application claims under examination were not entitled to a basis in the priority application, thus making the later-filed divisional application available as prior art.
 
This decision is relevant for U.S. applicants who file a U.S. application while contemplating the possibility of filing a counterpart EPO application. The case evidences the particular attention that the EPO pays to the exact language of the specification and claims of the application under examination and any priority document. It follows from this decision, for example, that if an applicant files a U.S. application that specifies narrow ranges or a specific description for a feature, and later files an EPO application that specifies a broader range or a more generic description of the feature, the EPO claims may not be entitled to the U.S. application filing date. If a subsequent EPO divisional application is filed, the divisional application potentially would destroy novelty for the earlier-filed EPO parent application. These circumstances present certain strategic considerations when undertaking any filings in the EPO.
 
Please contact Fitch Even partner Steven G. Parmelee with any questions regarding this decision and its import on practice in the EPO. 
 
Written by Fitch Even attorney Joseph H. Herron

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