1 April 2013Jurisdiction reportsJens Rasmussen and Nils Tarras-Wahlberg

Divisionals as prior art

The European application can be a European direct application (EP application) or a European part of an International application (Euro-PCT application). The divisional applications take over the effective date of the earlier application or earliest application in a line of divisional applications.

Divisional applications may be of interest as they give the applicant a possibility of protecting those parts of the invention disclosed in the application as filed, including non-searched subject matter, specific embodiments not covered by the scope of claims of the parent application, and claims that have to be removed from the parent application due to lack of unity.

To target a patent application against an infringing party, it is also possible to reduce the scope of the claims of the parent patent application, which it is hoped will lead to a faster-granted patent covering the potentially infringing product. A divisional application can be filed maintaining claims with broader scope of protection.

Article 54(3) EPC includes provisions to prevent the same idea being patented twice, even when two EP applications are filed so close in time that the earlier was not published prior to the filing date of the later. The earlier EP application is included in the state of the art for the later filed EP application, but only relating to novelty.

If an applicant enters the EP jurisdiction via an EP direct or Euro-PCT application claiming priority from an EP or national application, the applicant or representative must take considerable care not to violate Article 54(3) EPC.

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