Pendency after withdrawal of earlier application  

The case underlying J 20/12 concerned a parent application which had been unconditionally withdrawn but the appellant had filed a request to correct this withdrawal. This request was ultimately refused by the Legal Board of Appeal (in decision J 1/11). After the request for correction, the appellant had filed a divisional application, which the Receiving Section decided not to process because the parent application had been withdrawn and, according to R. 36(1) EPC, an applicant could only file a divisional application relating to any pending earlier European patent application. The Legal Board saw no difference between the case of an application deemed to be withdrawn due to the non-payment of fees (which had been dealt with in J 4/11, OJ EPO 2012, 516) and an application that had been voluntarily withdrawn by a communication from the applicant (as in the case at issue). In neither case was the withdrawal the result of a decision taken by the Office. From the wording of Art. 67(4) EPC ("withdrawn" in contrast to "finally refused"), and the further clarification given in decision J 4/11, it could be concluded that an application was no longer pending as from the moment it had been withdrawn. This was not altered by the possibility of filing a request for correction of a withdrawal under R. 139 EPC, nor by the actual filing of such a request. In other words, an application was not pending because a correction of a withdrawal under R. 139 EPC had been requested. It was not necessary for the board to decide what the position would have been if the request for correction pertaining to the parent application had been allowed.

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