Several referrals have recently been made to the Enlarged Board of Appeal (the highest instance within the European Patent Office) concerning divisional applications.
The first referral, made in T 39/03 and now pending under G 1/05 was made in August 2005. The second referral was made in decision T 1409/05 (March 2006) and is pending as G 1/06. In May 2006 a third referral followed, T 1040/04, pending under G 3/06. In the meantime, the three cases G 1/05, G 1/06 and G 3/06 have been consolidated. It is hoped that the outcome of the referrals will result in some clarification of the situation regarding divisional applications filed with the European Patent Office (EPO), which in recent years has become an area of increasing legal uncertainty.
Under Article 76(1) EPC, a European divisional application may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed. In so far as Article 76(1) EPC is complied with, the divisional application shall be deemed to have been filed on the date of filing of the earlier application and shall have the benefit of any right to priority. A European divisional application, under Rule 25(1) EPC, may be filed up to but not including the date of the publication of the mention of grant of the parent application.
Offending subject-matter
Current practice before the EPO, as set out in the current Guidelines for examination in the EPO, has been that, if an Examining Division is of the opinion that the divisional application includes subject-matter extending beyond the content of the parent application, the applicants will be given an opportunity to remove the offending subject-matter. Only if the applicants are unwilling to remedy the defect by removal of the offending subject-matter, will the divisional application be refused under Article 97(1) EPC due to non-compliance with Article 76(1) EPC.
Enlarged Board of Appeal
The first referral to the Enlarged Board of Appeal occurred because in recent decisions from the Technical Boards of Appeal views had been expressed which seemed to diverge from the current practice. The first referral to the Enlarged Board of Appeal was made in T 39/03. T 39/03 referred subsequently to other recent decisions from the Technical Boards of Appeal, including T 1158/01, T 720/02 and T 797/02, which suggested that a more limited practice with respect to divisional applications should be established. For example, whether a “nested claims” requirement, which applies in particular to divisional applications filed from earlier divisional applications, as set out in T 720/02 and T 797/02 had to be established.
As a result of the first referral to the Enlarged Board of Appeal, the EPO issued a practice notice in the Official Journal stating that until the Enlarged Board of Appeal has issued its decision in the case G 1/05 all proceedings before EPO first-instance in which the decision depends entirely on the Enlarged Board”s decision will be suspended.
The third referral, T 1040/04, is quite similar to the referral made in T 39/03, but specifically addresses the question whether a granted patent may be amended during opposition proceedings, whereas the first referral only considered the amendment of patent applications. The third referral is pending under G 3/06.
In T 1409/05 the Board of Appeal the Board seems to offer some hope with respect to re-establishing the status quo, questioning the additional requirements expressed in earlier decisions, such as T 720/02, etc. The second referral was made because the Board stated that its views were not “in line with the ratio decidendi of several recent decision of other boards of appeal”. Thus in T 1409/05 it was considered appropriate to refer questions to the Enlarged Board of Appeal in order to ensure uniform application of the law. In particular, the Board suggested that the above-mentioned “nested claim” requirement to be problematic, since there are no indications in the EPC that a different interpretation should be used if the term “earlier application” refers to a divisional application or an root application. The Board states that there is in particular no indication that in such a case the term “content” should be equated with the “the matter for which protection is sought” (as claimed on filing) an interpretation which would be contrary to the established meaning of the term.
In T 1409/05 the following questions are referred to the Enlarged Board of Appeal:
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?
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?
or
b) that all the divisional predecessors of said divisional comply with Article 76(1) EPC?
Question 1) asks the Board to address the issue of divisional applications that are divisional applications of divisional applications. In particular, the Board asks whether the subject-matter of the divisional application must be derivable from what is disclosed in each of the preceding applications as originally filed.
Question 2a) explicitly asks the Enlarged Board of Appeal to state whether the “nested claim” requirement of T 720/02 and T 797/02 is correct. In other words may the claims of the second divisional be drawn from any part of the earlier divisional application as filed? (Not just the claims as argued in T 720/02 and T 797/02.)
Question 2b) explicitly asks the Enlarged Board of Appeal to state whether the divisional of the divisional application is also invalid if it transpires that the first divisional has added subject-matter.
An answer of “no” to questions 2a) and 2b) would lead to a more liberal approach closer to the current practice. Answers of “yes” to questions 2a) and 2b) would reflect the more limited approach suggested in, for example, T 720/02 and T 797/02.
The three referrals have been consolidated and are pending under G 1/05, G 1/06 and G 3/06, and the Enlarged Board of Appeal will issue a single decision on the topic.
Whilst G 1/05 may be asking the Enlarged Board of Appeal to tighten up the present practice, the reasons in G 1/06 would appear to be suggesting to the Enlarged Board of Appeal that the present practice is correct and requirements, such as the “nested claim” requirement have no legal basis in the EPC. However, until the outcome from the Enlarged Board of Appeal is known, there is a large degree of legal uncertainty with respect to how European divisional applications will be treated in the future. In the meantime, it is advisable to discuss the subject-matter of the divisional application to be filed prior to filing with the patent attorney concerned. In particular, extra care should be taken with respect to all aspects of possible added subject-matter. Extra care should also be taken with respect to filing divisional applications from divisional applications. Further, in cases where the parent application includes a plurality of inventions (for example, as a result of a well-founded non-unity objection), it may be advisable to ensure that all the remaining inventions for which any protection may be desired at a later date, are either included in the claims of one divisional application filed directly from the parent, or that the remaining inventions are covered in the claims of separate divisional applications filed from the parent application whilst the parent is still pending.