Divisional applications under the European Patent Convention

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During the grant procedure before the European Patent Office (EPO), divisional applications can be filed under Article 76 EPC out of pending earlier European patent applications. A divisional application, sometimes called European divisional application, is a new patent application which is separate and independent from the earlier application, unless specific provisions in the European Patent Convention (EPC) require something different. [1] A divisional application, which is divided from an earlier application, cannot be broader than the earlier application, neither in terms of subject-matter nor in terms of geographical cover. [2]

Contents

Background

The possibility to file a divisional application is provided in many patent systems and is guaranteed by Article 4.G. of the Paris Convention for the Protection of Industrial Property of 1883, to which more than 170 countries are Contracting Parties. [3]

Some basic characteristics of a divisional application are as follows:

"A divisional application is an application which derives from an earlier application. It is filed after the earlier application (usually some years later), but keeps the same filing and priority dates as the earlier application. That way the divisional is not affected in terms of its patentability by any publications which occur between the filing of the earlier application and the filing of the divisional. The earlier application is often referred to as the "parent"." [4]

Relation to the parent European patent application

Procedure independent from that of the parent application

A divisional application under the EPC is a new patent application which is separate and independent from the parent application, unless specific provisions in the European Patent Convention (EPC) require something different.

"The procedure concerning the divisional application is in principle independent from the procedure concerning the parent application and the divisional application is treated as a new application.... Although there are some connections between the two procedures (e.g. concerning time limits), actions (or omissions) occurring in the procedure concerning the parent application after the filing of the divisional application should not influence the procedure concerning the latter...." [5]

No extension of subject-matter

A divisional application may, however, be filed "only in respect of subject-matter which does not extend beyond the content of the earlier application as filed." [6] The practice relating to the filing of divisional applications under the EPC was clarified by the Enlarged Board of Appeal of the EPO in June 2007. The Board held that a divisional application which on filing contained subject-matter extending beyond the content of the earlier application as filed could be amended later to remove the deficiency, even at a time when the earlier application is no longer pending. [7]

No extension of geographical scope

In terms of geographical scope, a Contracting State can only be designated in a divisional application if that State was designated in the parent application at the time of filing of the divisional. [8]

Time limit for filing a divisional application

The conditions for filing divisional applications regarding the time limit to be met have however been modified several times since the entry into force of the European Patent Convention in the 1970s, [9] and changed again on 1 April 2010. [10] What has not been changed however is that a divisional application can by no means be filed after grant of a European patent, i.e. based on a European patent. A divisional application can only be filed based on a pending European patent application, provided that the provisions of Rule 36(1) EPC are met.

Situation prior to 1 April 2010

Prior to 1 April 2010, it was only required that the parent application be pending at the time the divisional application is filed. [11] A divisional application of a European patent application could be filed for any pending application [11] up to the day preceding the mention of grant of the European patent, but not including the date of grant. [12]

Rules applicable between 1 April 2010 and 31 March 2014

As of 1 April 2010, [13]

"divisional applications on the applicant's own initiative (so-called voluntary divisional applications) will need to be filed within a period of two years from the first communication by the EPO examining division in respect of the parent (i.e. the previous) or an even earlier (in case of a "chain" of applications) application." [10]

Rule 36(1) EPC has been amended to read as follows: [14]

"(1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that:
(a) the divisional application is filed before the expiry of a time limit of twenty-four months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued, or
(b) the divisional application is filed before the expiry of a time limit of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82, provided it was raising that specific objection for the first time."

New Rule 36(1)(a) introduced a time limit for voluntary division of the parent application, while Rule 36(1)(b) provides a time limit for mandatory division of the parent application in case of a lack of unity under Article 82 EPC. [15] "Mandatory" in that sense means that, to cover each of the non-unitary inventions (i.e. the inventions that are non-unitary in relation to the invention which will be the subject of the parent application), one or more divisional applications need to be filed. However, if the applicant decides not to seek patent protection for the non-unitary inventions, no divisional applications need to be filed.

In a decision dated 26 October 2010, the Administrative Council further specified, or clarified, [16] that "the Examining Division's first communication" referred to in Rule 36(1)(a) EPC had to be a communication under Article 94(3) EPC, and Rule 71(1) and (2) EPC, or Rule 71(3) EPC. [17]

New rules since 1 April 2014

In October 2013, the Administrative Council of the European Patent Organisation again amended Rules 36, 38 and 135 of the Implementing Regulations, which define the time limits for filing divisional applications in Europe. The new rules apply to divisional applications filed on or after 1 April 2014. According to the new rules, the filing of divisional patent applications is again possible as long as the earlier patent application is pending. [18]

An additional fee is however due "in the case of a divisional application filed in respect of any earlier application which is itself a divisional application". [18] In other words, an additional fee for the filing of divisional applications of the second or any further generation was introduced. The amount of the additional fees was announced in December 2013. [19] The purpose of the additional fee is "to discourage the filing of long sequences of divisional applications", so as to also discourage "the prolongation of pendency periods". The "use of divisional applications as a tool for prolonging the pendency of subject-matter before the EPO" has been regarded by the EPO as "detrimental to legal certainty for third parties as well as to patent office workloads". [20]

Meaning of "pending earlier European application"

As mentioned above, a divisional application can only be filed based on a pending European patent application. Several Board of Appeal decisions have dealt with the meaning of a "pending earlier European application" (Rule 36(1) EPC: "The applicant may file a divisional application relating to any pending earlier European patent application, provided that ..."). This is indeed not defined in the EPC. [21]

In Board of Appeal decision J 18/09, it was held that a divisional application cannot be validly filed based on a PCT application before entry into European regional phase, [22] as later confirmed in Enlarged Board of Appeal decision G1/09. [23] In other words, "a Euro-PCT-application not having entered the European phase is not a pending earlier European application in the sense of Rule 36(1) PCT". [24] This contrasts with the situation in the United States, as laid out in the U.S. Manual of Patent Examining Procedure (MPEP). [25]

In decision G 1/09, the Enlarged Board of Appeal held that

"In the case where no appeal is filed, a European patent application which has been refused by a decision of the Examining Division is thereafter still pending within the meaning of Rule 25 EPC 1973 (Rule 36(1) EPC) until the expiry of the time limit for filing a notice of appeal." [26]

In decision J 4/11, the Legal Board of Appeal held that

"An application which has been deemed to be withdrawn for non-payment of a renewal fee is not pending within the meaning of Rule 25(1) EPC 1973 in the period for filing a request for re-establishment of rights under Article 122 EPC 1973 in respect of such non-payment or in the period after which such an application is filed in the event of such request being refused." [27]

Further requirements regarding the filing of a divisional application

European divisional applications must be filed directly or by post with one of the filing offices of the EPO, i.e. at the European Patent Office at Munich, The Hague, or Berlin. [28] It may also be filed using the so-called epoline online filing software.

The filing of a European divisional application with a national authority (such as a national patent office) has no effect in law. [29] The national authority may however, as a service, choose to forward the divisional application to the EPO. If the authority does so, the divisional application is deemed to be received at the time the documents are received at the EPO. [29] The authority has, however, no obligation to do so. [30]

See also

Related Research Articles

European Patent Office

The European Patent Office (EPO) is one of the two organs of the European Patent Organisation (EPOrg), the other being the Administrative Council. The EPO acts as executive body for the organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative body. The actual legislative power to revise the European Patent Convention lies with the Contracting States themselves when meeting at a Conference of the Contracting States.

In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively. The priority right allows the claimant to file a subsequent application in another country for the same invention, design, or trademark effective as of the date of filing the first application. When filing the subsequent application, the applicant must claim the priority of the first application in order to make use of the right of priority. The right of priority belongs to the applicant or his successor in title.

The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention (EPC) as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Organisation adopted the final new text of the EPC 2000. The EPC 2000 entered into force on December 13, 2007.

The European Patent Convention (EPC), the multilateral treaty instituting the legal system according to which European patents are granted, contains provisions allowing a party to appeal a decision issued by a first instance department of the European Patent Office (EPO). For instance, a decision of an Examining Division refusing to grant a European patent application may be appealed by the applicant. The appeal procedure before the European Patent Office is under the responsibility of its Boards of Appeal, which are institutionally independent within the EPO.

The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

A divisional patent application is a type of patent application which contains matter from a previously filed application. While a divisional application is filed later than the parent application, it may retain its parent's filing date, and will generally claim the same priority.

Double patenting is the granting of two patents for a single invention, to the same proprietor and in the same country or countries. According to the European Patent Office, it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention. However, the threshold for double patenting varies from jurisdiction to jurisdiction.

Grant procedure before the European Patent Office

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

G 1/05 and G 1/06 are decisions of the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) that were issued on 28 June 2007 and answer questions relating to divisional applications under the European Patent Convention (EPC). The two decisions were published in the Official Journal of the EPO in May 2008.

In European patent law, the limitation and revocation procedures before the European Patent Office (EPO) are post-grant, ex parte, administrative procedures allowing any European patent to be centrally limited by an amendment of the claims or revoked, respectively. These two procedures were introduced in the recently revised text of the European Patent Convention (EPC), i.e. the so-called EPC 2000, which entered into force on 13 December 2007.

Article 84 of the European Patent Convention (EPC) specifies that the "matter" for which patent protection is sought in an application - the purported invention - shall be stated ("defined") in the claims. This legal provision also requires that the claims must be clear and concise, and supported by the description. The function, form and content of the claims are defined by Article 84 supplemented by Rule 43 EPC.

Article 123 of the European Patent Convention (EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable. In particular, Article 123(2) EPC prohibits adding subject-matter beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant.

Under case number G 3/08, the Enlarged Board of Appeal of the EPO issued on May 12, 2010 an opinion in response to questions referred to it by the President of the European Patent Office (EPO), Alison Brimelow, on October 22, 2008. The questions subject of the referral related to the patentability of programs for computers under the European Patent Convention (EPC) and were, according to the President of the EPO, of fundamental importance as they related to the definition of "the limits of patentability in the field of computing." In a 55-page long opinion, the Enlarged Board of Appeal considered the referral to be inadmissible because no divergent decisions had been identified in the referral.

Under Article 82 EPC, a European patent application must "...relate to one invention only or to a group of inventions so linked as to form a single general inventive concept." This legal provision is the application, within the European Patent Convention, of the requirement of unity of invention, which applies also in many other jurisdictions.

The restitutio in integrum or re-establishment of rights under the European Patent Convention (EPC) is a means of redress available to an applicant or patent proprietor who has failed to meet a time limit in spite of exercising "all due care required by the circumstances". The legal basis for this means of redress is provided in Article 122 EPC. If the request for restitutio in integrum is accepted, the applicant or patentee is re-established in its rights, as if the time limit had been duly met.

The fees due at the European Patent Office (EPO) in relation to a European patent application are laid out in the Rules relating to Fees of 20 October 1977, as adopted by decision of the Administrative Council of the European Patent Organisation of 7 December 2006 and as last amended by decision of the Administrative Council of 12 December 2018.

Under the European Patent Convention (EPC), a petition for review is a request to the Enlarged Board of Appeal of the European Patent Office (EPO) to review a decision of a board of appeal. The procedure was introduced in Article 112a EPC when the EPC was revised in 2000, to form the so-called "EPC 2000". A petition for review can essentially only be based on a fundamental procedural defect. Its purpose is not to obtain a reconsideration of the application of substantive law, such as points relating to patentability. The petition is a restricted form of judicial review, limited to examining serious errors of procedure which might have been committed by the Legal or Technical Boards of Appeal, prejudicing the right to a fair hearing of one or more appellants. Before the entry into force of the EPC 2000 in December 2007, it was not possible for a party who did not have his requests granted in an appeal to challenge the final decision of the Legal or Technical Board of Appeal on any grounds.

Art. 23 1/15, Art. 23 2/15 and Art. 23 1/16 are three related cases decided by the Enlarged Board of Appeal of the European Patent Office concerning the removal from office of Patrick Corcoran, a member of the Boards of Appeal, who had been previously suspended by the Administrative Council of the European Patent Organisation. According to Article 23(1) EPC, members of the Boards of Appeal may only be removed from office by the Administrative Council on a proposal from the Enlarged Board of Appeal. Two cases were successively initiated by the Administrative Council, but the Enlarged Board eventually dismissed both of them. In the third case initiated by the Administrative Council, the Enlarged Board decided not to propose the removal from office of Corcoran.

In case G 1/15, the Enlarged Board of Appeal of the European Patent Office (EPO) affirmed the concept of partial priority. That is, a patent claim in a European patent application or European patent may partially benefit from the priority of an earlier application.

References

  1. ↑ Decision G 1/05 of the Enlarged Board of Appeal of the EPO, Reasons 3.1 and 8.1.
  2. ↑ J 0012/18 () of 19.5.2020, reasons 1.3.1-1.3.2.
  3. ↑ World Intellectual Property Organization (WIPO) web site, Contracting Parties > Paris Convention (Total Contracting Parties: 177). Consulted on 13 June 2021.
  4. ↑ "Divisional applications at the EPO" (by Peter Watchorn) in Patent Information News 2, June 2010 Archived 23 June 2010 at the Wayback Machine , pages 4–6.
  5. ↑ Opinion G 4/98 in point 5 of the Reasons, cited in decision G 1/05 of the Enlarged Board of Appeal of the EPO, Reasons 8.1.
  6. ↑ Article 76(1) EPC
  7. ↑ Decisions G 1/05 and G 1/06 of the Enlarged Board of Appeal of the EPO.
  8. ↑ J 0012/18 () of 19.5.2020, headnote.
  9. ↑ CA/145/08, Munich, 10.10.2008, SUBJECT: Divisional applications, SUBMITTED BY: President of the European Patent Office, ADDRESSEES: 1. Committee on Patent Law (for opinion) 2. Administrative Council (for decision) Archived 4 March 2009 at the Wayback Machine , pages 2–3 "Section III. Evolution of the Implementing Regulations Concerning Divisional Applications"
  10. 1 2 EPO web site, Time limits to be introduced for divisional applications Archived 3 June 2009 at the Wayback Machine , News, 3 April 2009. Consulted on 24 October 2009.
  11. 1 2 Rule 36(1) EPC, formerly Rule 25(1) EPC 1973.
  12. ↑ Decision J 7/04 of 9 November 2004, Reasons 3.
  13. ↑ Decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the European Patent Convention (CA/D 2/09) Archived 5 June 2009 at the Wayback Machine , Article 2.1. The decision is also published here, in the EPO Official Journal 5/2009, p. 296.
  14. ↑ Decision of the Administrative Council of 25 March 2009 (CA/D 2/09), Article 1.1.
  15. ↑ Notice from the European Patent Office dated 20 August 2009 concerning amended Rule 36(1) and (2) EPC (European divisional applications) and consequential amendments to Rules 57(a) and 135(2) EPC.
  16. ↑ (in French) Laurent Teyssedre, Nouvelle règle 36 et JO d'octobre, Le blog du droit européen des brevets, 5 November 2010. Consulted on 7 November 2010.
  17. ↑ "Decision of the Administrative Council of 26 October 2010 amending Rule 36 of the Implementing Regulations to the European Patent Convention (CA/D 16/10)". Archived from the original on 3 November 2010. Retrieved 7 November 2010.
  18. 1 2 "Decision of the Administrative Council of 16 October 2013 amending Rules 36, 38 and 135 of the Implementing Regulations to the European Patent Convention (CA/D 15/13)". epo.org. European Patent Office. 24 October 2013. Archived from the original on 27 October 2013. Retrieved 26 October 2013. "Notice from the European Patent Office dated 8 January 2014 concerning European divisional applications – amendment of Rules 36, 38, and 135 EPC and Article 2(1) RFees (OJ EPO 2014, A22)". epo.org. European Patent Office. 28 February 2014. Retrieved 9 March 2014.
  19. ↑ "Decision of the Administrative Council of 13 December 2013 amending Article 2 of the Rules relating to Fees and adjusting the amount of the reduction in the fee for the supplementary European search where the international or supplementary international search report was drawn up by one of the European International Searching Authorities (CA/D 14/13)". epo.org. European Patent Office. 13 December 2013. Archived from the original on 9 March 2014. Retrieved 9 March 2014.
  20. ↑ "Document CA/89/13, Amendments to the Implementing Regulations to the EPC regarding divisional applications (Rules 36, 38 and 135 EPC)" (PDF). epo.org. Munich: Administrative Council of the European Patent Organisation. 27 September 2013. Retrieved 26 October 2013.
  21. ↑ "... The EPC does not define "pending ... application"" in Decision J 4/11 of the Legal Board of Appeal of 25 November 2011, point 4.
  22. ↑ Decision J 18/09 of the Legal Board of Appeal 3.1.01 of 1 September 2010 (to be published in the EPO Official Journal).
  23. ↑ Decision G1/09 of September 27, 2010 [ permanent dead link ], point 3.2.5.
  24. ↑ Decision J 18/09, reasons 16, second paragraph.
  25. ↑ MPEP 1895 "A Continuation>, Divisional,< or Continuation- in- Part Application of a PCT Application Designating the United States [R-2]".
  26. ↑ Decision G 1/09 of the Enlarged Board of Appeal dated 27 September 2010, Headnote.
  27. ↑ Decision J 4/11 of the Legal Board of Appeal of 25 November 2011, catchword.
  28. ↑ Article 76(1) EPC in conjunction with Rule 36(2) EPC
  29. 1 2 Guidelines for Examination in the EPO , section a-iv, 1.3.1 : "Where and how to file a divisional application?"
  30. ↑ (in French) Decision T 196/10 of December 6, 2012, reasons 1.1.

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