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Guidelines for Examination

 
 
1.1.1.1
The earlier application must be pending 

A European patent application may be divided only when it is pending. In order to divide a European application, the applicant files one or more European divisional applications. It is irrelevant what kind of application the European patent application which is divided, i.e. the parent application, is. The parent application could thus itself be an earlier divisional application. In the case of the parent application being a Euro-PCT application, a divisional application can only be filed once the Euro-PCT application is pending before the EPO acting as a designated or elected Office, i.e. the Euro-PCT application must have entered the European phase (see E-VIII, 2.4.1).

As noted above, the parent application must be pending when a divisional application is filed. Reference is made in this regard to the observations made in decision G 1/09 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). It is not possible to validly file a divisional application when the parent application has been refused, withdrawn or is deemed to be withdrawn (see also the next two paragraphs).

If an application is deemed to be withdrawn due to the non-observance of a time limit (e.g. following failure to pay the filing fee (Art. 78(2)), to pay a renewal fee (Art. 86(1)), to pay the fee for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, unless the loss of rights, as communicated pursuant to Rule 112(1), is remedied. This may be effected either by means of an allowable request for further processing or, where further processing does not apply to the time limit in question, or the time limit for further processing has been missed, re-establishment of rights (which in the latter case is a request for re-establishment in respect of the period for further processing - see E-VII, 2). The application which has been deemed to be withdrawn is however not pending in the period for filing a request for re-establishment of rights or in the period after which such a request is filed in the event of such request being refused (see J 4/11, reasons 21). Remedy of the loss of rights is also possible or, if the applicant considers that the finding of the EPO was inaccurate, by applying for a decision pursuant to Rule 112(2), whereupon either the competent EPO department shares his opinion and rectifies its decision or that department gives an unfavourable decision which is subsequently overturned on appeal. In this case the Office acknowledges that no loss of rights ever occurred and the application will have been pending throughout. If on the contrary the decision in effect confirms the loss of rights, the loss of rights will have occurred when the relevant time limit expired and the application ceased to be pending then. See J 4/11, reasons 22.

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 file a notice of appeal, 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 be filed while such appeal proceedings are under way. The filing of a divisional application in either of these cases also requires that at least one of the periods under Rule 36(1)(a) and Rule 36(1)(b) has not yet expired (see A-IV, 1.1.1.2 and 1.1.1.3).

Furthermore, even where an application is still pending, while it is subject to a stay of proceedings in accordance with Rule 14(1) (see A-IV, 2.2), the filing of a divisional application is not possible because 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 for the decision 3.2.5).

References

Art. 76
Rule 36(1)