F. Divisional applications

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2.Subject-matter of a divisional application: 2.1.Subject-matter extending beyond content of the earlier application
2.1.1Directly and unambiguously derivable from content of earlier application as filed
2.1.2Sequence of divisionals – derivable from each of the preceding applications as filed
2.1.3Language issues
2.2.Amendments to divisional applications
2.3.Subject-matter of a patent granted on a divisional application
2.3.1Findings of G 1/05 and G 1/06 also applicable to granted patents
2.3.2Ground for opposition under Article 100(c) EPC
2.4.Link between subject-matter of earlier application and divisional application
2.4.1No abandonment of subject-matter in earlier application if divisional is filed
2.4.2No effect on content of divisional application if earlier application has lapsed
2.4.3Final decision on subject-matter in the parent application – res judicata
a)Decisions affirming cross-procedural res judicata effect
b)Decisions leaving open the question of cross-procedural res judicata effect
c)Decisions doubting cross-procedural res judicata effect
2.4.4Re-filing of same subject-matter
3.Filing a divisional application: 3.1.Right to file a divisional application
3.1.1Applicant of earlier application entitled to file divisional application
3.1.2Filing of divisional application during stay of proceedings
3.1.3Joint applicants
3.1.4No obligation to postpone a decision to allow the filing of a divisional application
3.2.Filing date attributed to divisional application
3.3.Language for filing divisional application
3.4.Divisional application to be filed with EPO
3.5.Requirement of pending earlier application
3.5.1Requirement of pending earlier application sets no time limit
3.5.2Pendency before the EPO
3.5.3Pendency in case of grant of earlier application
3.5.4Pendency in case of refusal of earlier application against which no appeal was filed
3.5.5Pendency in case of refusal of earlier application against which an appeal was filed
3.5.6Pendency in case of deemed withdrawal of earlier application and request for re-establishment
3.5.7Pendency in case of deemed withdrawal of earlier application and no reaction to loss of rights communication under Rule 112(1) EPC
3.5.8Pendency in case of withdrawal of earlier application
3.6.Time limits under Rule 36(1)(a) and (b) EPC in the version in force between 1 April 2010 and 31 March 2014
3.6.1Changes to Implementing Regulations
3.6.2Interpretation of Rule 36(1)(a) and (b) EPC
4.Procedural questions: 4.1.Procedural independence of divisional application
4.2.Designation of contracting states in a divisional application
4.2.1Deemed designation of all states designated in earlier application at the date of filing of divisional
4.2.2Payment of fee for each designated State – case law concerning situation prior to 1 April 2009
4.3.Correction of errors in a divisional application
4.4.Search fee for a divisional application
5.Double patenting: 5.1.No legitimate interest in grant of a second patent claiming same subject-matter
5.2.Different subject-matter and scope of protection; overlapping subject-matter
5.3.Double patenting objection in opposition

New decisions

T 592/15

A request to postpone the taking of the decision on the allowability of an appeal at least until a divisional application is filed would oblige a board to examine questions outside of the framework of the appeal concerned and is therefore to be refused (see Reasons 4 to 4.5).

J 3/20

Under Article 76(2) EPC only those Contracting States that had been designated in the earlier application at time of filing the divisional can be designated in the divisional. A designated state forfeited in the parent application at time of filing the divisional cannot be revived in the divisional one.

J 14/18

J 13/18

J 12/18

G 4/19

1. A European patent application can be refused under Articles 97(2) and 125 EPC if it claims the same subject-matter as a European patent which has been granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC.

2. The application can be refused on that legal basis, irrespective of whether it a) was filed on the same date as, or b) is an earlier application or a divisional application (Article 76(1) EPC) in respect of, or c) claims the same priority (Article 88 EPC) as the European patent application leading to the European patent already granted.

OJ Supplementary Publications

Case law 2021
Case law 2020: In J 12/18, interpreting Art. 76(2) EPC in accordance with the recognised rules of interpretation, the Legal Board confirmed that under this provision only those states that had been designated in the earlier application at the time of filing the divisional could be designated in the divisional. A designated state forfeited in the parent application at the time of filing the divisional could not be revived in the divisional one. The fact that the application was referred to as a "divisional" application under Art. 76(2) EPC implied by definition that it was divided from the earlier application and thus at the time of filing it could not be broader than the earlier application it derived from. Only after the filing of the divisional application was its fate separated from changes concerning the earlier application. Likewise, in the context of the required systematic interpretation of Art. 76(2) EPC the Legal Board noted that the nature of a divisional application, which was derived from a parent application thereby benefiting from the parent's date of filing and priority rights, implied that the divisional could not be broader than the parent application, neither its subject-matter (Art. 76(1) EPC) nor its geographical cover. Thus Art. 79 EPC had to be considered. According to Art. 79(3) EPC the applicant could withdraw the designation of a Contracting State at any time up to the grant of the European patent. However, further possibilities, in particular the addition of a Contracting State, which had previously been excluded by withdrawal, were not foreseen in Art. 79 EPC. A revival of the withdrawn designation could only be achieved under particular circumstances if the requirements for a correction under R. 139 EPC were fulfilled. This, for reasons of consistency, had to apply also to a divisional derived from the earlier application. (See also the parallel decisions J 13/18, J 14/18 and J 3/20, which contain identical reasoning on this point.) See also chapter V.A.6.6. "Submissions made in the statement of grounds or the reply – first stage of the appeal proceedings – Article 12(3) to (6) RPBA 2020" below.
Case law 2019: ABl. EPA 2020, Zusatzpublikation 4
OJ EPO 2020, Supplementary publication 4
JO OEB 2020, Publication supplémentaire 4