Introduction

For today’s online seminar, we are joined by Katarina Foss-Solbrekk, a DPhil Candidate in Law at the Oxford Intellectual Property Research Centre (OIPRC), to discuss her research on the use of divisional patent applications in the pharmaceutical industry. We will start off the discussion with a presentation from Katarina, and then open up the rest of the seminar to questions from the audience.

Divisional Patent Applications in Action: Background

Despite being used frequently by practitioners in a wide array of technical fields, divisional patent applications (‘divisionals’) seldom attract scholarly attention. This is an error, particularly in the pharmaceutical field. Recent caselaw reveals that after generic/biosimilar manufacturers successfully revoke patents standing in the way of market entry, divisionals claiming protection for similar subject matter as the patent that has just been revoked can crop up, hindering generic/biosimilar medicines from entering the market once the ‘main’ patent protecting the medical compound no longer applies. This issue is exacerbated by the fact that right before or after proceedings start, rightsholders de-designate countries to avoid a negative judgment that may affect a court elsewhere, meaning the cost and time of initiating legal proceedings were for nothing. These practices demonstrate that divisionals deserve our attention. This article thus fills this scholarly gap by showing how divisionals are (mis)used in practice, before arguing that patent reform is necessary to prevent this from occurring. 

If you are interested in attending this event, please register here.