EPO clarifies meaning of a "pending" earlier application with regard to the filing of divisional applications
The European Patent Offices (EPO) Enlarged Board of Appeal (EBoA) has now issued its decision in case G1/09.
It is well known that divisional applications can be filed at the EPO only from a pending earlier European patent application. Further limits on when a divisional application can be filed were introduced earlier this year (see our earlier news item).
The Guidelines for Examination in the European Patent Office confirm that an application is pending if it has not been refused, withdrawn or is deemed to be withdrawn, and that the application will remain pending up to (but not including) the date of grant of the patent, subject to the further limits noted above.
Thus, it was previously the case that if an application had already been granted, or had been refused or withdrawn, it was too late to file a divisional application.
An exception to the above can occur when an appeal is filed against a decision of the EPO refusing an application. An applicant must file an appeal against such a decision within two months from issue of the decision. If, by the end of that two-month period, an appeal has been filed, the application is effectively revived and becomes pending once more. It will be appreciated, therefore, that a divisional application can be filed because the application is pending again.
It is clear from the above that, once the appeal has been filed, the application is pending again. However, what was not clear prior to the above EBoA decision was the status of the refused application during the period between the decision and the deadline by which the appeal could be filed. This lead to the question, Is a European patent application that has been refused at oral proceedings still pending during the time allowed in which to file an appeal?
The EPO considered this issue in a case where an application was refused by the examining division in oral proceedings. The applicant filed a divisional application within the time allowed for filing an appeal but they did not actually file an appeal.
The EPO refused to recognise the filing of the divisional application because the pending earlier application had been finally refused and because no appeal had been filed. The EPO issued a decision to this effect and the applicant appealed this decision.
The Legal Division BoA heard the appeal (J2/08) but could not decide on the meaning of the word "pending". They referred the following question to the Enlarged Board of Appeal:
"Is an application which has been refused by a decision of the Examining Division thereafter still pending within the meaning of Rule 25 EPC 1973 (Rule 36(2) EPC) until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed?"
The EBoA answered the above question in the affirmative by concluding:
" under the EPC a patent application which has been refused by the Examining Division is thereafter still pending within the meaning of Rule 25 EPC 1973 until the expiry of the period for filing an appeal and, on the day after, is no longer pending if no appeal is filed.The same conclusion applies to Rule 36(1) EPC 2000 both in its former and its current version."
In conclusion, therefore, an application is still considered pending for two months after a decision refusing that application, and so it remains possible to file a divisional application from that application in that two-month period without the need for filing an appeal (assuming of course that the above-mentioned further limits are also met).