In T 0700/25, the Board considered whether an appeal by the patent proprietor against a decision to grant could be used to restore the pending status of a European patent application in order to file a divisional application. The decision is relevant for applicants who discover, after grant, that a divisional application should have been filed earlier, or who seek to rely on the suspensive effect of appeal proceedings.
Background
The Examining Division issued a decision to grant European patent EP 3 603 346 on 6 February 2025. The mention of grant was published in the European Patent Bulletin on 5 March 2025. On 20 March 2025, the patent proprietor filed an appeal against the decision to grant and paid the appeal fee.
On 17 April 2025, the proprietor filed a divisional application. The date of the mention of grant was subsequently deleted from the European Patent Bulletin on 30 April 2025. The proprietor then withdrew the appeal on 6 May 2025.
Subsequently, the proprietor requested reimbursement of the appeal fee under Rule 103(1)(b) EPC and also requested that the application return to its granted state, with a new communication indicating the date of mention of grant.
Key findings of the decision
The central question was whether the appeal had been validly filed.
The proprietor argued that the appeal was not clearly inadmissible, relying in particular on the decision of the Legal Board of Appeal in J 1/24, and submitted that the proprietor was adversely affected by the decision to grant because an antecedent issue in claim 6 had been identified only after grant.
The Technical Board of T 0700/25 was not persuaded. It found that correction of the alleged deficiency in the granted claims had not been pursued and could not retrospectively justify the filing of the appeal. On the facts, the Board considered that the appeal had been filed to restore “pendency” of the application for the purpose of filing a divisional application under Article 76 EPC and Rule 36(1) EPC.
The Technical Board held that an appeal against a decision to grant for that purpose is manifestly inadmissible. It followed the rationale of J 28/03 rather than J 1/24. In the Board’s view, an applicant whose agreed text has proceeded to grant is, in principle, not adversely affected by the decision to grant within the meaning of Article 107 EPC. If such an appeal is withdrawn before any statement of grounds is filed, no reasons have been given to justify entitlement to appeal.
Analysis and implications
The decision emphasises that the suspensive effect of an appeal cannot be treated as an independent mechanism for reviving pendency, in particular when the appeal was not validly filed. Furthermore, in this decision, the Board stated that Rule 36(1) EPC does not provide a time limit open to further processing or re-establishment of rights, and that using an appeal against grant to restore pendency would circumvent the absence of such a legal remedy.
The Board also clarified that retraction of the publication of the mention of grant can only follow if the Examining Division grants interlocutory revision under Article 109 EPC or if the competent Board allows the appeal. A notice of appeal alone, without grounds capable of establishing that the decision adversely affected the applicant, is not sufficient.
Conclusion
The Board ordered reimbursement of the appeal fee, not under Rule 103(1)(b) EPC, but because the fee had been paid without valid reason. T 0700/25 confirms that an appeal by the patent proprietor against grant of their own patent cannot be used merely to restore pendency for filing a divisional application.
The key takeaway for applicants is thus that there is a need to decide on divisional filings before publication of the mention of grant.
