The divisionals saga - the long-awaited result!

In our Newsletter 20, published in October 2006, we reported on some potentially worrying European Patent Office (EPO) Board of Appeal decisions regarding divisional applications. As reported, those decisions led to questions being referred to the Enlarged Board of Appeal (EBoA) for guidance on the correct interpretation of the provisions governing divisional applications, namely Article 76 and Rule 25 EPC. Since the outcome of the referrals had the potential to affect many applications and granted patents, as well as having an affect on the IP strategy of many companies, it was eagerly awaited by applicants and European Patent Attorneys alike. The wait came to an end on 28 June 2007 when the EBoA gave its answers to the referred questions, along with background analysis of the development of the relevant provisions and some detail as to how divisional applications should be regarded by EPO examiners.

Under European practice, divisional applications are intended for situations where the claims of an application cover two or more inventions not linked so as to form a single general inventive concept, in which case a lack of unity objection typically is raised. Claims relating to one invention can remain in the application and claims relating to the other invention(s) are deleted, but can be pursued via one or more divisional applications.

It has become relatively 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 might be thought later on to be valuable, and secondly, to seek protection for something slightly different from what was claimed in the parent case. Using divisional applications in this way has largely 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).

The referrals to the EBoA, given case numbers G1/05 and G1/06 contained several questions, which were considered together. Further questions referred to the EBoA under case number G3/06, were not considered because the appellant in that case withdrew their appeal.

The first referral concerned the requirement that a divisional application may not contain subject matter extending beyond that found in the parent application. It is not uncommon for new claims drafted for a divisional application to contain something which is arguably added subject matter. For example, the claims filed with a divisional application might be argued by an EPO examiner to add subject matter by defining claim features using text which is not identical to that found in the original application, or by impermissible claim broadening. Conventional practice of the EPO had been to allow an applicant to delete from a divisional application any subject matter found not to have been present in its parent.

The Enlarged Board considered whether it is correct in law for a divisional application, which on filing contains subject matter extending beyond the content of the earlier application as filed, to be allowed to be amended after filing to remove the offending subject matter. The Enlarged Board concluded that, yes, this is allowable. Furthermore it is allowable regardless of whether the earlier application is pending at the time of making the amendment.

This is good news for applicants because it provides confirmation that a divisional application may be amended to remove any impermissibly added subject matter during substantive examination without having an adverse effect on the application's validity. It also means that complex filing strategies for divisional applications should no longer be necessary as a precaution.

The second referral sought a decision in the light of two unusual decisions from a particular Board of Appeal. These unusual decisions had been based on the view that in a sequence of cascading divisional applications, that is an original application followed by a series of divisional applications, each having been divided from its immediate predecessor, the second and all further generation divisional applications may only be used to pursue claims directed to an aspect of the subject matter claimed (not merely described) in its immediate predecessor.

The EBoA considered whether a divisional application in the type of series mentioned above needs to comply with the above requirement, or any other substantive requirement in addition to those in Article 76(1) EPC. It was concluded that a divisional application does not need to comply with any additional requirement. The EBoA confirmed that what is required is that a divisional application in the type of series described above, must only contain subject matter that is directly and unambiguously derivable from what is disclosed in each of the preceding applications as filed.

Therefore, at the time a first divisional application is filed, there is no need for an applicant to have already taken a decision on whether or not he may want to pursue claims directed to each invention or aspect of the invention in the original disclosure. However, if such decisions have not yet been taken it is advisable to ensure that all disclosure and language present in an original application is retained in each subsequent divisional application when it is filed. The safest way of doing this normally would be to file the divisional application with a specification identical to the specification of the parent application as originally filed, although in that case it may be best to amend the application prior to issue of the first examination report.

In summary, the Enlarged Board has endorsed both our understanding of the provisions governing divisional applications and our general practice in connection with divisional applications, as it stood before the unusual decisions leading to the referrals reported above. In our view these latest decisions are entirely sensible and give rise to the outcome that we had expected.

If you have queries about your divisional applications or about filing divisional applications in future, please contact your Venner Shipley patent attorney.

01 Apr 2007

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