UK: Europe Puts the Brake on Continuation Practices

Proposals have been circulating before the United States Congress regarding changes to the US code to restrict continuation practices for US patent applications. In Europe, the term "continuation application" does not exist. Nevertheless, it is customary for applicants to file divisional applications and ‘divisionals of divisionals’in order to extract the last benefits from their applications and to prolong pendency.

In combined cases T020/02 and T0797/02 (23 September 2004), the EPO Board of Appeal issued controversial decisions regarding such divisional practices. Their underlying reasoning was that divisional applications filed from divisional applications (i.e. second and further generation divisionals) are to be treated differently to divisional applications filed from an original parent application (i.e. first-generation divisionals).

It was held that the invention or group of inventions defined in the claims of the first-generation divisional determines the "essential content" of that application. Therefore, to meet the requirements of the European Patent Convention, any further divisional applications divided out of the first-generation divisional must be directed to objects encompassed by such invention or group of inventions. This finding was primarily based on the Board of Appeal’s desire to provide legal certainty for the public and to avoid interpreting the EPC in a manner that would set up a system of "continuation applications" as in the US.

According to these decisions, firstgeneration divisionals and secondgeneration divisionals are subject to different filing requirements. A first-generation divisional can be filed with claims to anything included in the description or claims of its parent application (unless explicitly abandoned by the applicant). However, a secondgeneration divisional can only ever claim subject matter falling within the scope of the claims of the first-generation divisional from which it was divided.

The alleged legal basis for such unequal treatment of secondgeneration divisionals is set out under heading 2.2 of decision T0720/02:

The Board did not provide a statutory basis for its ruling under the EPC on the grounds that applications divided out of divisional applications are "not specifically envisaged in the Convention". It appears that second-generation divisionals are not specifically envisaged in the EPC 2000 either, since none of the amendments to Article 76(1) will have any effect on this issue when they come into force.

The appellant argued that the "public certainty" that the Board of Appeal was concerned with protecting, was adequately served by those provisions of the EPC which prevent an applicant extending the subject matter of an application beyond that which was included on filing. However, previous authorities have established that these provisions do allow the applicant to draw on the description for matters not originally covered by the claims. The appellant argued that this prevented an applicant from obtaining an unwarranted protection. It also argued that the previous practice of the EPO was to allow secondgeneration divisionals to be filed for subject matter outside the scope of the claims of the firstgeneration divisional as long as there was basis in the description of the first-generation divisional.

The appellant requested that questions on this point of law be put to the Enlarged Board of Appeal for clarification. The Board of Appeal refused this request on the grounds that the appellant’s suggested interpretation of the EPC had obviously unacceptable consequences – that it "would set up a system of "continuation applications" of the type explicitly provided for in the US law" and would "pave the way for potential misuse by the applicants of the possibility afforded by the EPC to file divisional applications".

How then to proceed with divisional applications? If the original parent application contained all necessary claims, then refiling the complete application and paying all excess claim fees may be an expensive but secure option. Of course, this does mean that the applicant will need to commit at the filing date as to which aspects of the invention or inventions claims should be filed for. Unfortunately, it is not always immediately clear which of those aspects are going to be of most use. Furthermore, there remains no legal certainty regarding the status of subject matter that was claimed but for which no excess claim fees are paid.

The other route to ensure that all possible claims are preserved for second-generation divisionals would be to include a very broad claim in the first-generation divisional. Subject matter in subsequent divisionals would be within the broad claim’s scope and the public should not then be surprised to see such matter being claimed. The disadvantage of this action is that the search is likely to be directed to that very broad claim and the results will be unhelpful to the applicant. Afurther search may be required once the claims are amended to a narrower and more realistic scope.

British-style omnibus claims may also be beneficial. Such claims are not acceptable to the EPO and would need to be deleted during examination. However, when the application is searched, the omnibus claim will be ignored and the search will be focused on the other claims.

Having a broadly-worded omnibus claim will arguably put the public on notice that the applicant is reserving the right to claim anything and everything in the divisional application as filed. Thus, later claims could be directed to anything within the description as well as the claims. It should be noted that this has not been tested and the scope of omnibus claims is not clear. The two occasions that they have been construed by the English courts, in one case they were given a broad interpretation and, in the other, a narrow interpretation.

The safest action is to ensure that all divisionals are filed from the original parent application during its pendency. This is what the Boards appear to be trying to achieve as it prevents the practice of keeping a cascade of pending divisional applications in order to keep all options open.

Most parties would agree that a firm line must be taken by the EPO to prevent the practice of adjusting claims based on knowledge of infringement. Adherence to the original wording of the parent application should be strictly enforced in order to protect the rights of third parties and ensure "public certainty".

Clarification on the EPO’s position regarding protection of "public certainty" by imposing restrictions on divisional applications may still be forthcoming. In case T0039/03 (26 August 2005), the Board of Appeal referred the following questions to the Enlarged Board of Appeal:

Should the EBA reach the point of answering question (3), we will presumably gain further insight into those greater "added matter" restrictions that are to be imposed on divisional applications.

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.