The divisionals saga
This article was taken from the Venner Shipley Newsletter edition 20
Under European patent practice, divisional applications are intended for situations where the claims of an application cover two or more inventive concepts and a lack of unity objection is raised. Protection for a first invention can be sought via the original case. Claims directed to the other invention(s) are deleted from the original case, but can be pursued via one or more divisional applications.
It has also become common practice to use divisional applications to hold open an applicant’s options. The two most common situations are, firstly, keeping an application pending so that it may be used to seek protection for whatever will prove to be valuable later on, and secondly, to seek protection for something slightly different from what was claimed in the parent case. Using divisional applications in this way has come from trying to follow US patenting strategies (where continuation and continuation-in-part applications are possible) within the framework of possibilities provided by the European Patent Convention (EPC). We sometimes call these types of divisional application ‘continuation’ divisionals.
We have recently been getting the impression that ‘continuation’ divisional applications are disliked by the European Patent Office (EPO), and that the EPO wants to tighten up the practice in this area. Our concerns have been borne out by several recent and worrying Board of Appeal decisions which, whilst perhaps aimed at tightening up the procedure, are causing uncertainty and potential disaster for applicants of both normal and ‘continuation’ divisional applications. This means that the job of choosing what to claim in a divisional application has been made much more complicated than it was in the past.
1. Whilst a divisional application may not contain subject matter extending beyond that found in the parent application, when trying to seek protection which is as broad as possible, it is not uncommon for ‘continuation’ divisional applications to contain something which is arguably added subject matter. For example, the claims filed with a divisional application might arguably cover combinations or embodiments which were not disclosed in the parent application. The previous practice of the EPO has been to allow an applicant to delete from a divisional application any subject matter found not to have been present in its parent.
Although this has been the practice of the EPO, the relevant article of the EPC in fact clearly states that a divisional application may only be filed in respect of subject matter which does not extend beyond the content of the earlier application
as filed.
In T39/03, questions were referred to the Enlarged Board of Appeal, under case number G1/05, questioning whether the previous EPO practice was correct and whether an application can ever be accorded a divisional status if, on filing, it contains any subject matter extending beyond the content of its parent as filed. If it is possible to amend an application to remove any added matter which was present on filing, a further question was asked about the timing of the amendment during the examination procedure.
2. Two further worrying decisions, T720/02 and T797/02, were decided by a Board of Appeal which appears to have taken a disliking to cascading divisional applications (i.e., grandparent, parent and child applications, with the child being filed when the grandparent is no longer pending). The Board decided that a child application in such a cascade may only contain claims directed to an aspect of the subject matter claimed (not just described) in the parent application. Whilst these decisions were a departure from previous EPO practice, the Board deciding these cases saw no reason to refer any questions to the Enlarged Board of Appeal.
A different Board of Appeal, (responsible for case T1409/05), took a strong, and in our view quite reasonable exception to these decisions and expressed the view that the law did not require the claims in a child divisional to be restricted to subject matter encompassed by a claim in its parent. Having stated its opinion the Board responsible for T1409/05 referred the matter up to the Enlarged Board of Appeal for a definitive decision and this is pending as case G1/06.
3. Subsequently, T1040/04 relating to post grant opposition proceedings has been halted, and questions referred to the Enlarged Board of Appeal as G3/06. The referral extends the questions asked as G1/05 to post grant proceedings, asking whether the patent granted on a divisional application which contained subject matter extending beyond the content of its parent application when it was filed, can be amended during opposition proceedings.
Cases G1/05, G1/06 and G3/06 have been consolidated and will be decided together by the Enlarged Board of Appeal.
It will be no surprise that we are keeping watch for the outcome of these cases. But where does this leave you if you want or need to file a divisional application?
At Venner Shipley we have developed a variety of strategies to deal with the fact that the job of choosing what to claim in a divisional application is much more complicated than it was in the past. We know that the facts surrounding each particular case and the requirements of each client will differ from one new divisional application to the next. Therefore we ensure that the options recommended and the advice given is tailored to each particular situation. In this way, regardless of the way the Enlarged Board of Appeal chooses to decide the questions before it, your patents strategy is adapted to give you the best chance of securing the protection desired.