The parent application must be pending when a divisional application is filed. Reference is made in this regard to the observations made in decisions G 1/09 and J 18/09 as to what constitutes a pending application. In the case of an application being filed as a divisional application from an application which is itself a divisional application, it is sufficient that the latter is still pending at the filing date of the second divisional application. An application is pending up to (but not including) the date that the European Patent Bulletin mentions the grant of the patent (OJ EPO 2002, 112). Rule 134 does not apply in this case. It is not possible to validly file a divisional application when the parent application has been finally refused, withdrawn or is deemed to be withdrawn (see also the next two paragraphs).
If an application is deemed to be withdrawn due to the non-observance of a time limit (e.g. following failure to pay the filing fee (Art. 78(2)), to pay a renewal fee (Art. 86(1)), to pay the fee for grant and publishing or the claims fees, or to file the translation of the claims (Rule 71(7)) in due time), the application is no longer pending when the non-observed time limit has expired.
In the event of non-payment of a renewal fee by the due date (Rule 51(1)), the application is pending up to the last day of the six-month period for payment of the renewal fee with an additional fee (Rule 51(2), first sentence), and a divisional application may still be filed during this period – even if the fees are ultimately not paid. Deemed withdrawal of the application takes effect on expiry of the six-month period (Rule 51(2), second sentence).
Once the application is deemed to be withdrawn, a divisional application can only be validly filed if the loss of rights, as communicated pursuant to Rule 112(1), is subsequently remedied. In such a case, the application is deemed to have been pending throughout.
Depending on the non-observed time limit, remedying the loss of rights may be effected either by means of an allowable request for further processing (see E-VIII, 2) or, where applicable, by a request for re-establishment of rights (see E-VIII, 3E‑VIII, 2). Furthermore, if the applicant considers that the findings in the notice of loss of rights are inaccurate, he may also apply for a decision under Rule 112(2) (see E-VIII, 1.9.3). If the competent EPO body shares his opinion or if it gives an unfavourable decision which is subsequently overturned on appeal, no loss of rights has ever occurred and the application will have been pending throughout (J 4/11, reasons 22). The same applies if the appeal decision is set aside by the grant of a petition for review and the appeal proceedings are re-opened under Art. 112a(5), with the consequence that the decision under Rule 112(2) is overturned.
If an application has been refused and no appeal has (yet) been filed, the application is still pending within the meaning of Rule 36(1) until expiry of the time limit for filing the notice of appeal (Art. 108), and a divisional application can be validly filed until expiry of this period (see G 1/09). Where the applicant does validly file a notice of appeal but fails to submit the written statement setting out the grounds of appeal, the refused application is pending until expiry of the time limit for filing the grounds of appeal under Art. 108 (J 23/13). If the grounds of appeal are submitted in due time, the decision to refuse cannot take effect until the appeal proceedings are over. As the provisions relating to the filing of divisional applications also apply in appeal proceedings (Rule 100(1)), a divisional application may then be filed while such appeal proceedings are under way. If the appeal proceedings are re-opened under Art. 112a(5), the application will have been pending throughout.
While proceedings are stayed in accordance with Rule 14(1) (see A‑IV, 2.2), the filing of divisional applications is not possible. Rule 14(1) constitutes a lex specialis with regard to the right to file a divisional on a pending application provided for in Rule 36(1) (see J 20/05 and G 1/09, reasons 3.2.5).
The pendency of the earlier application is not a procedural deadline or time limit, which, in case of non-compliance, would lead to a loss of rights. Instead, it is a condition of a substantive nature for the filing of divisional applications (G 1/09, reasons 3.2.3). Therefore, the provisions on re-establishment of rights and further processing do not apply to the filing of divisional applications (J 10/01, reasons 15).