3.1.1 Applicant of earlier application entitled to file divisional application

In J 20/05 the Legal Board held that only the applicant of the earlier (parent) application was entitled to file the divisional application. It stated that, fundamentally, it is the entitlement acquired by virtue of the parent application that gives the right to file a divisional application. This means that the rights in respect of the divisional application derivable from the parent application extend to, but are also limited to, the rights existing in the parent application at the filing date of the divisional application. The entitlement to file a divisional application under Art. 76 and R. 25 EPC 1973 (now R. 36 EPC) was a procedural right that derived from the applicant's status as applicant in the earlier application (with reference to J 2/01).

In J 2/01 (OJ 2005, 88) the Legal Board held that joint applicants could not acquire a procedural status different from that of a single applicant, because otherwise each of them could perform different and contradictory procedural acts, including the filing of different versions of the patent to be granted. Therefore, where an application (the "earlier application") had been filed jointly by two or more applicants and the requirements of Art. 61 or R. 20(3) EPC 1973 (now R. 22(3) EPC) had not been met, the right to file a divisional application in respect of the earlier application under Art. 76 EPC 1973 was only available to the registered applicants for the earlier application jointly and not to one of them alone or to fewer than all of them. In J 7/21 the application at issue was filed as a divisional application from an earlier application which had not been filed by the same co-applicants. However, the co-applicants could prove to the board’s satisfaction that the second applicant had acquired applicant status for the earlier application by universal succession. The Legal Board confirmed previous case law according to which there was no need to meet the requirements under R. 22 EPC, as this provision did not apply. Indeed, the notion of "transfer" in R. 22(3) EPC should be interpreted as not covering universal successions. Therefore, the application in suit was filed by the same co-applicants as the parent application and met the requirements of R. 36(1) EPC.

In J 34/86 the Legal Board allowed an application to be filed as a divisional application by a party other than the registered applicant for the parent application. This case concerned, however, a particular set of circumstances. The applicant for the parent application had been ordered by a US court to assign all property rights in the invention to the person who became the applicant for the divisional application, and the applicant for the parent application had already signed an assignment to that effect.