4.12.12 Amended claims not admitted with divisional applications pending

In T 840/93 (OJ 1996, 335) the board held that in the light of G 9/91 and G 10/91 (OJ 1993, 408 and 420), special attention must be given to late-filed requests at the appeal stage when divisional applications are still pending. If the distinction between the subject-matter of the divisional applications was unclear and some of them were still pending before the department of first instance, it was inappropriate to admit, during oral proceedings at the appeal stage after opposition, new requests which are neither immediately allowable nor bona fide attempts to overcome objections raised.

In T 28/92 the claims were not obviously allowable and the alternative of admitting the requests, but referring the matter back to the department of first instance for further examination, was not acceptable, particularly as there were still pending divisional applications of the application on which the patent in suit was based. The board would not wish to increase the number of proceedings in which much the same subject-matter was already being considered by various instances of the EPO.

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