3.5.2 Pendency of a Euro-PCT application before the EPO acting as patent-granting authority according to the EPC

In J 18/09 (OJ 2011, 480) the Legal Board of Appeal decided that an international application which did not fulfil the requirements according to Art. 22 PCT for entering the European phase was not pending before the EPO and therefore could not be considered a pending earlier European patent application pursuant to R. 36(1) EPC. The term "pending earlier European patent application" under R. 36(1) EPC included the requirement that the application must be pending before the European Patent Office acting as patent-granting authority according to the EPC. On the basis of the provisions of the PCT and the EPC, a Euro-PCT application not having entered the European phase was not a pending earlier European application within the meaning of R. 36(1) EPC. See also G 1/09, point 3.2.5 of the Reasons.

In T 1316/20 the divisional application for the patent in suit was filed the day before the expiry of the 31-month period for the parent international application's entry into the European phase. The request for examination was made on the same day, along with the payment of the related fees. However, since apparently no request for early processing of the application had been filed, the processing of the parent application could not be permissibly processed until the expiry of the 31-month period, and so it could not be considered a pending European application until the end of this period. The divisional application filed before its entry into the European phase was therefore inadmissible under R. 36(1) EPC. However, the board was of the opinion that the lack of a pending parent application was not a ground for objection in opposition or appeal proceedings. While the notice of opposition might indicate that the divisional application went beyond the content of the parent application, this would concern the technical content of the parent application, not its pendency.