Summary
The examination of certain European divisional patent applications is currently suspended at the European Patent Office (EPO). When a divisional application is considered to contain subject matter that extends beyond the content of the earlier application, the examination of the application is likely to be put on hold, because the question whether this defect can be corrected by deleting the additional subject matter is presently under review by the Enlarged Board of Appeal. The examination of such cases will only resume after the Enlarged Board of Appeal issue their opinion.
What This Means In Practice
If a divisional application is considered to contain subject matter that extends beyond the content of the earlier application, its examination will be put on hold until the Enlarged Board of Appeal issue their opinion. Unfortunately there is nothing that can be done to expedite proceedings. It could take up to two years or more for the Enlarged Board of Appeal’s opinion to issue; further delays are likely as the Examining Divisions will then have to deal with a backlog of cases that were put on hold pending the outcome. We and others are doing everything possible to encourage the Enlarged Board to address this matter as soon as possible.
The Details
According to the European Patent Convention (EPC), a divisional patent application may be filed any time up to the grant of the earlier application. Article 76(1) EPC, second sentence, provides that:
[A divisional application] may be filed only in respect of subject matter which does not extend beyond the content of the earlier application as filed; in so far as this provision is complied with, the divisional application shall be deemed to have been filed on the date of filing of the earlier application and shall have the benefit of any right to priority.
Hitherto it has been the practice of the EPO to allow an applicant at any later stage of the examination procedure to amend a divisional application, which is considered to contravene the provisions of Article 76(1) by extending beyond the subject matter of the earlier application, to remove such added subject matter (provided that this amendment does not contravene other provisions of the EPC).
In the recent Board of Appeal decision T 39/03 dated 26 August 2005, the Board expressed their concern that this practice contravenes the provisions of the EPC, and referred the following questions to the Enlarged Board of Appeal:
(1) Can a divisional application which does not meet the requirements of Article 76(1) EPC because, at its actual filing date, it extends beyond the content of the earlier application, be amended later in order to make it a valid divisional application?
(2) If the answer to question (1) is yes, is this still possible when the earlier application is no longer pending?
(3) If the answer to question (2) is yes, are there any further limitations of substance to this possibility beyond those imposed by Articles 76(1) and 123(2) EPC? Can the corrected divisional application in particular be directed to aspects of the earlier application not encompassed by those to which the divisional as filed had been directed?
The referral is pending before the Enlarged Board of Appeal as G01/05.
Decision T 1040/04 referred a question similar to question (1) above to the Enlarged Board, relating to whether the amendment would be permissible in opposition proceedings to overcome the ground of opposition. This referral is pending before the Enlarged Board of Appeal as G 03/06.
Other Issues
In addition, the Board of Appeal in T 1409/05 looked at recent developments in the case law around divisional applications in some detail and discussed at length why they consider some of those developments to be problematic. The following questions with respect to "nested divisionals" were transferred to the Enlarged Board from Board of Appeal decision T 1409/05:
(1) In the case of a sequence of applications consisting of a root (originating) application followed by divisional applications, each divided from its predecessor, is it a necessary and sufficient condition for a divisional application of that sequence to comply with Art. 76(1), second sentence, that anything disclosed in that divisional application be directly, unambiguously and separately derivable from what is disclosed in each of the preceding applications as filed?
(2) If the above condition is not sufficient, does said sentence impose the additional requirement
(a) that the subject matter of said claims of said divisional be nested within the subject matter of the claims of its divisional predecessors? Or
(b) that all the divisional predecessors of said divisional comply with Art. 76(1) EPC?
This case is pending before the Enlarged Board of Appeal as G 01/06. All three referrals concerning divisional applications have been consolidated. It is to be hoped that the Enlarged Board takes this opportunity to correct some of the problematic recent developments of the case law around divisional applications by the Boards of Appeal.
As is the usual practice of the EPO (in accordance with T 166/84), the EPO has suspended all proceedings before the EPO first-instance departments (examining and opposition divisions) in which the decision depends entirely on the Enlarged Board of Appeal’s decision.
We shall continue to monitor this situation and shall keep you informed as and when we have more news to report.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
