Filing Divisional Applications from Refused European Patent Applications

This article was included in our Winter 2010 edition of Inside IP magazine.

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 (EBA) 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 (unity of invention), 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 – see Oliver Anderson’s article on page 19), 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 versionof the rule came into force on 18 October 2001.  In a recently issued decision, G1/09, the EBA clarified what is meant by a pending European application for the purpose of filing divisional applications.  The decision of the EBA 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 the case of grant of the parent application, until the mention of the grant of the parent application in the European Journal and, in the 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 was 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 EBA, 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, 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 EBA 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 EBA recognised in its decision that its definition of a pending application goes against existing practice of the EPO.  However, the EBA noted interpretation makes the final date for filing a divisional application more transparent for the applicant and for third parties, may help prevent unexpected legal consequences of decisions to refuse and 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.

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 29 Nov 2010

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