According to Art. 76(2) EPC 1973, the European divisional application shall not designate contracting states which were not designated in the earlier application. Pursuant to Art. 76(2) EPC all the contracting states designated in the earlier application at the time of filing of a divisional application are deemed to be designated in the divisional application. For divisional applications filed after 1 April 2009, only one designation fee has to be paid; if this designation fee is not paid in due time, the application is deemed to be withdrawn (R. 36(4) EPC, R. 39(2) EPC).
The following case law concerns the situation before 1 April 2009, where designation fees had to be paid for each designation of a contracting state.
In G 4/98 (OJ 2001, 131), the Enlarged Board of Appeal found that there was no support under the European patent system for the view that a failure to pay designation fees in due time had the effect that the designations disappeared retroactively as if they had never existed. On the contrary, the board pointed out that the wording of Art. 78(2) and Art. 79(2) EPC 1973 and the European patent system clearly indicated that up to the due date for payment of the designation fees, the designations had full effect. Only if the designation fees were not paid in due time would the designations not have any effect with respect to acts to be performed after that date, such as the filing of a divisional application. Retroactivity of the effects of nonpayment of designation fees would occur only where the EPC explicitly provided for it, i.e. in the case of provisional protection (Art. 67(4) EPC 1973). The applicant might designate all contracting states designated in the parent application in the divisional application, and he might proceed with all of them even if in respect of the parent application he later paid only some or no designation fees. This was in line with the fact that the procedure concerning the divisional application was in principle independent from the procedure concerning the parent application and that the divisional application was treated as a new application. G 4/98 supersedes the decision in J 22/95 (OJ 1998, 569), according to which failure to pay a designation fee rendered the designation void ab initio.
In J 40/03 the applicant sought to designate a contracting state in a divisional application filed after the time limit for payment of designation fees on the parent application had expired. This contracting state was designated in the parent application as filed but no designation fee for that state had been paid. The board confirmed the established case law (G 4/98, OJ 2001, 131; J 25/88, OJ 1989, 486; J 19/96) on this issue. The designations in a parent application, all or some of which may be designated in a divisional application, were those in the parent at the time of filing of the divisional application. If the time limit for paying the designation fees had expired and designation fees had been paid for fewer states than those originally designated in the parent, then the divisional could only designate some or all of those states which remained designated in the parent; other states formerly designated in the parent were deemed withdrawn by virtue of Art. 91(4) EPC 1973 (now R. 39 (2) EPC), and thus deemed never to have benefited from any provisional protection by virtue of Art. 67(4) EPC 1973. The board concluded that the interpretation of Art. 76(2) EPC 1973 in its proper context could be summarised as "all states validly designated in the parent may also be designated in the divisional" (emphasis by the board).
In J 1/05 the applicant had paid the designation fee only in respect of one contracting state. After the time limit for the payment of designation fees for the parent application had expired, he filed a divisional application designating all the EPC contracting states. The board confirmed G 4/98 (OJ 2001, 131), in which it was held that only such states as were already designated in the parent application could be designated in a divisional application, or, in the event that the designation fee for the parent application had not been paid, those for which the normal period for payment of the designation fee had not yet expired. After expiry of that period, the provisional designation of any other contracting states was deemed to be withdrawn and the right to designate further states was lost. Moreover, no right to the valid designation of new states in the divisional application could be derived from the fact that an appeal was pending against a notification of a loss of rights under R. 69 (2) EPC 1973 (now R. 112 (2) EPC) in relation to the parent application.