Divisional Applications at the European Patent Office
Two sets of questions relating to divisional applications were referred to the Enlarged Board of Appeal (EBoA). In view of the overlapping issues, both sets of questions were considered simultaneously by the EBoA who recently delivered respective consolidated decisions.
Encouragingly, the EBoA have concluded in their decision that the body of practice built up by the European Patent Office (EPO) in relation to divisional applications strikes a balance of being equitable to both patent applicants and third parties.
The EPO had established a practice that if a divisional application was filed including subject matter not present in the parent application as filed, this was not to be fatal to the divisional application; the application could be amended during prosecution to remove the offending subject matter.
However, in T 39/03, a series of questions regarding the possibility of amending divisional applications to remove subject matter not included in the parent application were referred to the EBoA.
The EBoA has confirmed that it is possible to make such amendment to the divisional application and even if the parent application is no longer pending.
In T1409/05, a series of questions relating to the validity of a family of cascading divisional applications was referred to the EBoA.
The EBoA held that divisional applications which were themselves divided from divisional applications were permissible. The Board also held that in order for divisionals of divisionals to be valid, it was sufficient if the subject matter of latest divisional was based on subject matter that was merely disclosed in each of the preceding applications. It is not necessary for the subject matter of that latest divisional to have been claimed in the preceding applications.
However, the inclusion in a divisional application of subject matter that was unequivocally and definitively abandoned from its parent application prior to the divisional application being filed will contravene the provisions of Article 76(1) EPC and that subject matter will have to be deleted from the divisional application. To avoid subject matter being considered "unequivocally and definitively abandoned", whenever subject matter is deleted from an application, the deletion should be made without prejudice to the applicants right to file a divisional application to that subject matter.
Detailed Discussion G1/05
The questions and their answers are given below:
(1) Can a divisional application which does not meet the requirements of Article 76(1) EPC because, at its actual filing date, it extends beyond the content of the earlier application, be amended later in order to make it a valid divisional application?
The EBoA held that the purpose of the statutory bar in Article 76(1) EPC to divisional applications including subject matter not present in the application as filed does not justify the conclusion that a divisional application which does not conform to Article 76(1) EPC is invalid.
Although Article 76(1) EPC does not state what should happen if on the actual date of filing, the divisional application contains excess subject matter, non-compliance with Article 76(1) EPC cannot raise an automatic presumption that the application is to be refused without any prior possibility of amendment being afforded to the applicant.
Thus, when all factors are taken into consideration, they favour an interpretation of Article 76(1) EPC permitting an applicant to amend a divisional application after the filing date so as to comply with the provisions of that article.
(2) If the answer to question (1) is yes, is this still possible when the earlier application is no longer pending?
The EBoA stressed that once a divisional application is filed, it is independent from the parent application. Thus, the fate of the parent application is not relevant to the question of whether an amendment to remove added matter from a divisional application is allowable.
(3) If the answer to question (2) is yes, are there any further limitations of substance to this possibility beyond those imposed by Articles 76(1) and 123(2) EPC? Can the corrected divisional application in particular be directed to aspects of the earlier application not encompassed by those to which the divisional as filed had been directed?
The answer given to question (2) is relevant to this question too. Once filed, a divisional application is independent from its parent and should be treated in the same manner as an ordinary application. Thus, a divisional application can be amended to claim subject matter disclosed in the parent application and in the divisional application as filed, but which is not claimed in the divisional application as filed.
Detailed Discussion G1/06
The questions and their answers are given below:
(1) In the case of a sequence of applications consisting of a root (originating) application followed by divisional applications, each divided from its predecessor, is it a necessary and sufficient condition for a divisional application of that sequence to comply with Article 76(1) EPC, second sentence, that anything disclosed in that divisional application be directly, unambiguously and separately derivable from what is disclosed in each of the preceding applications as filed?
While Article 76(1) EPC is not explicitly worded to cover divisional applications of divisional applications, it cannot be said to forbid them.
As mentioned above, in connection with the answers given in connection with G1/05, divisional applications are independent from their parents and are to be treated in the same manner as ordinary applications.
Thus, according the filing date of the first application in a chain of divisional applications to a later divisional application in that chain of divisional applications is justified if the subject matter was disclosed in each of the preceding applications as filed and if it had not been unequivocally and definitively abandoned by the time the divisional application was filed
According to Reasons 3-5 of J 15/85, subject matter will be considered as being unequivocally and definitively abandoned unless the applicant states that when it is deleted from the parent application, that the deletion is made without prejudice to the applicants right to reintroduce that subject matter in a divisional application.
The EBoA found no adequate basis for imposing any additional requirements besides those of Article 76(1) and Rule 25 EPC on divisional applications beyond the requirements that all applications have to fulfil.
(2) If the above condition is not sufficient, does said sentence impose the additional requirement?
(a) that the subject-matter of the claims of said divisional be nested within the subject-matter of the claims of its divisional predecessors?
(b) that all the divisional predecessors of said divisional comply with Article 76(1) EPC?
As the condition set out in the first question is sufficient, no answer to question (2) is required.