INFORMATION FROM THE EPO
Notice from the European Patent Office dated 1 September 2006 concerning staying of proceedings
In its decision T 39/03 (see OJ EPO 2006, 362), Technical Board of Appeal 3.4.2 has referred questions to the Enlarged Board of Appeal as provided for under Article 112(1)(a) EPC. They concern the validity of a divisional application which, at its actual filing date, contains subject-matter which extends beyond the content of the earlier application. The case is pending under G 1/05.
In its decision T 1409/05 (to be published in the OJ EPO), Technical Board of Appeal 3.4.03 has referred additional questions under Article 112(1)(a) EPC to the Enlarged Board of Appeal. The questions pertain to the compliance with Article 76(1) EPC for a sequence of divisional applications (see OJ EPO 2006, 426). The case is pending under Ref. No. G 1/06.
Moreover, in its decision T 1040/04 (to be published in the OJ EPO), Technical Board of Appeal 3.2.03 has referred a further question under Article 112(1)(a) EPC to the Enlarged Board of Appeal which concerns the amendment of a patent granted on a divisional application during opposition proceedings (see OJ EPO 2006, 427). The case is pending under Ref. No. G 3/06.
Cases G 1/05, G 1/06 and G 3/06 have been consolidated by the Enlarged Board of Appeal.
Proceedings before EPO first-instance departments (examining and opposition divisions) will be stayed until issuance of the decision of the Enlarged Board of appeal only where the two following conditions are met:
- the stay of proceedings has explicitly been requested by at least one of the parties to the proceedings, and
- in the opinion of the examining or opposition division, the outcome of examination or opposition proceedings depends entirely on the decision of the Enlarged Board of Appeal.
The practice applies not only to cases potentially affected by the above-mentioned referrals, but will also be applied to any future cases potentially affected by future referrals.
The present Notice is immediately applicable and supersedes the Notice from the EPO dated 2 November 2005 concerning divisional applications (OJ EPO 2005, 606). All cases affected by decision T 39/03 will henceforth be stayed only where the two above-mentioned conditions are fulfilled. In cases where the proceedings before EPO first-instance departments have already been stayed ex officio in accordance with the Notice dated 2 November 2005, proceedings will be resumed if this is requested by all the parties to the proceedings.