Filing Divisional applications from non-pending European patent applications

As previously reported, amendments to a rule governing when a divisional application can be filed at the European Patent Office (EPO) came into force in April 2010. While European patent attorneys have been busy discussing how the changes to the rule should be interpreted, the Enlarged Board of Appeal of the EPO has been busy interpreting what is meant by some of the terminology that remains from the previous version of the rule.

Rule 36 of the implementing regulations of the European Patent Convention (EPC) 2000 now states that an applicant may file a divisional application relating to any pending earlier European patent application, provided that:

(a)    the divisional application is filed before the expiry of a time limit of twenty-four months from the Examining Division's first communication [under certain articles] in respect of the earliest application for which a communication has been issued, or

(b) the divisional application is filed before the expiry of a time limit of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82, provided it was raising that specific objection for the first time.

While the conditions in (a) and (b) were recently added (and the conditions in (a) were recently amended), the requirement that the earlier European patent application has to be pending for a divisional application to be validly filed has been a requirement since an amended version of the rule came into force on 18 October 2001.  In a recently issued decision, G1/09, the Enlarged Board of Appeal clarified what is meant by a pending European application for the purpose of filing divisional applications. The decision of the Enlarged Board of Appeal was somewhat unexpected since it goes against existing practice of the EPO.

The EPC does not contain a definition of the notion “pending European patent application”.  However, before the new decision, it was the practice of the EPO to allow a divisional application to be filed, in case of grant of the parent application, until the mention of the grant of the parent application in the European Journal and, in case of refusal, until an oral decision of refusal is issued at oral proceedings or a written decision of refusal is issued in written proceedings. Moreover, it is established practice that if the refusal is appealed, a divisional application can again be filed, since an appeal has suspensive effect. In other words, an admissible appeal would cause the application to be 'pending again'.

In the specific case referred to the Enlarged Board of Appeal, a European patent application, No. 01102231.6, belonging to Sony Deutschland GmbH (“Sony”) was refused orally by the Examining Division at oral proceedings.  Sony filed a divisional application at the EPO three weeks after the oral proceedings, before the confirmatory written decision to refuse the application had issued. Sony never appealed the decision to refuse.

The Receiving Section decided, based on Rule 25 of EPC 1973, renumbered as Rule 36 in the EPC 2000 and later amended, that the application could not be considered as having been validly filed as a divisional application since the parent had not been pending at the time of filing of the application. The Receiving Section took the position, consistent with existing practice, that when a decision to refuse an application has been pronounced at oral proceedings, the application is no longer pending.

Sony appealed the decision of the Receiving Section to the Legal Board of Appeal and argued that the parent application was still pending when the divisional application was filed since the time limit for filing a notice of appeal against the decision to refuse the parent application had not yet expired.  As a main request, Sony requested that the decision of the Receiving Section be set aside. As an auxiliary request, Sony requested that questions concerning the interpretation of the term “pending” be referred to the Enlarged Board of Appeal.  The Legal Board of Appeal chose to pass on the questions to the Enlarged Board of Appeal who, considering that the question referred to it needed clarification “not only for deciding the present case but also because it concerns a point of law of fundamental importance”, admitted the referral.

The Enlarged Board of Appeal considered the rules for interpretation laid down in the Vienna Convention on the Law of Treaties (VCLT), but also the legislative history of Rule 25 of the EPC 1973, when deciding what is meant by a pending European patent application. In their decision, the Appeal Board noted that a European patent application involves two aspects. It is not only an object of property deriving from the right of the inventor to a European patent and conferring on its proprietor provisional protection under Article 67 EPC 1973 but it also involves procedural rights which the applicant is entitled to exercise with respect to the EPO.  A European patent application “may therefore stand for substantive rights as well as for procedural rights of the applicant”.  The term 'pending' is used in the EPC to describe both applications and proceedings and the meaning depends on the context. Since Rule 25 refers to “any pending patent application” and not to pending proceedings, the Appeal Board decided that it is not relevant, for the purpose of filing divisional applications, whether the proceedings are pending before the EPO.  It was noted, based on the legislative history of Rule 25 EPC 1973, that the term 'pending' does not establish a time limit but relates to the substantive rights associated with the earlier application, a notion that is also consistent with earlier case law. The Appeal Board took the position that a pending European patent application in the context of Rule 25 EPC 1973 “is a patent application in a status in which substantive rights deriving therefrom under the EPC are (still) in existence”.

The Appeal Board further noted that substantive rights of an applicant include provisional protection, according to Article 67(4) EPC, conferred by the European application after publication.  Article 67(4) provides that an application shall be deemed never to have had the effects of provisional protection when it has been withdrawn, deemed to be withdrawn or 'finally refused'.  Substantive rights may therefore continue to exist until an application is finally refused. According to established case law in the Contracting States of the EPC, the final character of a decision only ensues upon expiry of the time limit for filing an appeal.  The Board of Appeal therefore concluded that “under the EPC a patent application which has been refused by the Examining Division is thereafter still pending within the meaning of Rule 25 EPC 1973 until the expiry of the period for filing an appeal, and, on the day after, is no longer pending if no appeal is filed”.  For the avoidance of doubt, the Enlarged Board of Appeal made it clear that this interpretation of the term 'pending' applies not only to Rule 25 EPC 1973 but also to corresponding Rule 36(1) of the EPC 2000 both in its former and its current version.

The Enlarged Board of Appeal recognised in its decision that its definition of a pending application goes against existing practice of the EPO for filing divisional application in the case of refusal of the parent application.  However, the Enlarged Board of Appeal noted that its interpretation makes the final date for filing an application more transparent for the applicant and for third parties, it may help prevent unexpected legal consequences of decisions to refuse and it avoids the need for appeals filed for the sole purpose of making a refused application 'pending' again.

The Board of Appeal also commented that the reasoning they used was consistent with the established practice for when a divisional application can be filed in the case of grant of the parent application. According to existing practice, a divisional application can still be validly filed in the period between the grant of the parent application and the publication of the mention of grant.  The Enlarged Board of Appeal noted that Article 64(1) EPC 1973 provides that, from the date of publication of the mention of the grant, it is no longer the patent application but the granted patent which confers on its proprietor the same rights as would be conferred by a national patent granted in that State. Consequently, using the same reasoning as in the case of refusal, the substantive rights in the application ceases to exist in the application from the day before the publication of the mention of grant and the pending status of the application therefore also ceases on the day before the publication of the mention of grant. Accordingly, consistent with established practice, the day before the publication of the mention of the grant of the parent application is the last date for filing divisional applications, provided that the other time limits of Rule 36 have not expired.

In summary, following G1/09, when a European application is refused by a decision of the Examining Division and an appeal is not filed, a divisional application can be filed until the expiry of the time limit for filing a notice of appeal.  The decision is beneficial to applicants because the period for filing divisional applications in case of refusal of the parent application may now be longer. Moreover, the decision may reduce the number of appeals that are filed for the sole purpose of making the parent application 'pending again'.  However, it is worth noting that the decision may be of limited effect considering that Rule 36 now includes the additional conditions set out in (a) and (b) above since relatively few cases are refused within twenty-four months of the first communication from the Examining Division.

Olivia Johansson 10 Nov 2010

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