Divisional filings are one of the most controversial topics in patent prosecution in Brazil. The Patent Office (BRPTO) severely limits the ability of patent applicants to file divisionals. For instance, the BRPTO rejects divisionals filed after receiving a notice of allowance, after receiving a denial or during the appeal stage. Article 26 of the Brazilian…
A recently published ruling of the Presidium of the Court for Intellectual Rights may turn the issue of cascading divisional applications upside down and endanger many patents granted on such applications. Background A divisional patent application is a separate one that is derived from an initial (parent) application. The necessity of filing such a divisional…
In a case concerning two divisional patents derived from the same parent application relating to ‘transcatheter heart valves’ or THVs, which can be introduced via a blood vessel, rather than through open heart surgery, the Court held one patent invalid for lack of inventive step, though had it been valid it would have been infringed….
Justin Watts (Freshfields) asked whether the strict test for priority fails to appreciate the early stage at which the inventor will be enunciating the invention (often in multiple jurisdictions). He refers particularly to the decision of G2/98 which is that one has to understand the application as a whole through the eyes of the skilled…
An interesting case decided by Technical Board of Appeal 3.5.5 in May 2009 strives to put an end to the (occasional) practice of some applicants and/or their European representatives of trying to again pursue in a divisional application a claim that was finally rejected in the parent application. The decision further develops existing case law…
