In G 1/09 (OJ 2011, 336) the Enlarged Board of Appeal decided that, in the case where no appeal is filed, a European patent application which has been refused by a decision of the examining division is thereafter pending within the meaning of R. 25 EPC 1973 (R. 36(1) EPC) until the expiry of the time limit for filing a notice of appeal. It stated that a "pending (earlier) European patent application" in the specific context of R. 25 EPC 1973 (R. 36(1) EPC) was a patent application in a status in which substantive rights deriving therefrom under the EPC were (still) in existence. A patent application which had been refused by the examining division was thereafter still pending within the meaning of R. 25 EPC 1973 (R. 36(1) EPC) until the expiry of the period for filing an appeal and, on the day after, was no longer pending if no appeal was filed.
In J 5/08, the Legal Board had to decide whether the parent application was pending at the date of filing of the divisional application which took place after the appeal in the parent application had been filed but before the interlocutory decision by the Examining Division revised the appealed decision. This "reformatory" revision decision was restricted to the correction of the decision to grant without any exhaustive statement in respect of the patentability of the subject matter. According to the Legal Board, a revision decision pursuant to Art. 109 EPC 1973 as such opened up the possibility that the patentability of the claimed subject matter would be completely re-assessed. In the case at issue, the grant proceedings which had been terminated by the revision decision were still pending up to that date of the revision decision. The Legal Board concluded that in general where a decision is taken on the allowability of an appeal, an application was pending within the meaning of R. 25 EPC 1973 (now R. 36(1) EPC) at least up to the point in time when the decision was taken.
The Legal Board in J 5/08 noted that there appeared to be diverging case law on the question of whether the suspensive effect of an appeal always had the consequence that the grant proceedings remained pending within the meaning of R. 25 EPC 1973 (now R. 36(1) EPC) during the appeal proceedings. One line of decisions appeared to say that this was indeed the case (J 28/94 and J 3/04). However, a different view was taken in J 28/03, where the Legal Board had decided that the grant proceedings were to be considered as not having been pending during the appeal proceedings if the appeal was dismissed as inadmissible; the status of a divisional application filed while an appeal against the decision to grant a patent on the parent application was pending depended on the outcome of that appeal.