3. Filing a divisional application

Abstract

In J 1/24 the Legal Board examined an appeal against the decision of the Receiving Section dated 14 September 2023 that the appellant's European patent application, filed on 24 May 2021, would not be treated as a divisional application. A decision to grant had been issued for the earlier application (hereinafter parent application) on 18 February 2021, setting an original date of publication of the mention of grant as 17 March 2021. On 16 April 2021, the applicant had filed an appeal against this decision to grant. As a consequence, the date of publication of the mention of grant had been deleted. After filing its grounds of appeal, the appellant had withdrawn its appeal in April 2022.

The Legal Board observed that the question to be decided in the present case was whether the parent application was still pending according to R. 36 EPC when the divisional application was filed. It recalled that in G 1/09 (point 3.2.4 of the Reasons), the Enlarged Board had concluded that a "pending application" was a patent application in a status in which substantive rights deriving therefrom under the EPC were (still) in existence. Substantive rights, which included provisional protection under Art. 67 EPC, might continue to exist after the refusal of the application until the decision to refuse becomes final (G 1/09, point 4.2.1. of the Reasons). The retroactive effect of a final decision refusing the rights conferred did not influence the pending status of the application before such decision was final. The Legal Board also recalled that, according to an obiter dictum in G 1/09, in the case of grant the pending status of a European patent application normally ceases on the day before the mention of its grant is published.

The Legal Board referred to J 28/03, which differentiated between the decision to refuse the parent application and the decision to grant the parent application, wherein an appeal against the decision to grant the patent as requested could not benefit from the suspensive effect of an appeal against the refusal of a patent application. It noted that in J 28/03, the date of publication of the mention of grant was not deleted, so that the grant of the patent became effective. The earlier application was therefore no longer "pending". On the contrary in the present case, the date of publication of the mention of the grant had been deleted as a result of the appeal filed and therefore the parent application was still pending.

The Legal Board was not convinced by the principle stated in J 28/03 that the answer to the question, whether the parent application was still "pending", depended on the outcome of the appeal against its grant. It referred to Art. 106(1), second sentence, EPC, according to which an appeal has suspensive effect, and observed that the provision did not distinguish between an appeal against the refusal or against the grant of a patent. The later decision G 1/09 stated that a patent application refused by the examining division was still pending within the meaning of R. 25 EPC 1973 until the expiry of the period for filing an appeal. The Legal Board found that the same conclusion had to apply to R. 36(1) EPC in its former and its current version. It further concluded that "pending grant proceedings" were not required, as pending proceedings could not be equated with a pending application (G 1/09). The issue was whether substantive rights still derived from the application. In the present case, the deletion of the date of the mention of grant prevented the grant of the patent becoming effective. Thus, substantive rights still derived from the application which was therefore still pending.

The Legal Board disagreed with the position in J 28/03 that "an appeal against a decision granting a patent and resulting in the publication of the grant of the patent would be expected to be inadmissible with respect to Art. 107(1) EPC and should therefore not benefit of the possibility to file a divisional application even during the appeal procedure". The current practice of the EPO treats appeals against the grant of a patent as appeals validly filed, with the consequence that the date of the mention of the grant is deleted in such a case. The board considered it inconsistent to view an appeal in two different ways: on the one hand, for the mention of the grant to be deleted, the appeal would only need to be admissible; on the other hand, the application of the suspensive effect would depend on the outcome of the appeal proceedings. There was no basis in Art. 106(1) EPC for this approach. In the established case law of the Boards of Appeal, an example of a clearly inadmissible appeal that should have no suspensive effect was an appeal without basis in the EPC, e.g. filed by a third party. The EPC however had no provision restricting appeals of the applicant against the grant of a patent. Such an appeal could not therefore be seen as clearly inadmissible. Thus, the parent patent application at hand was still pending when the divisional application was filed.