G 1/09

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G 1/09
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Enlarged Board of Appeal of the European Patent Office
Issued27 September 2010
Board composition
Chairman: Peter Messerli
Members:P. Alting van Geusau, S. Perryman, B. Schachenmann, J.-P. Seitz, J. M. Súarez Robledan, R. Young
Headword
Pending application/SONY

G 1/09 is a decision issued on 27 September 2010 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that, following refusal of a European patent application, the application remains pending until the expiry of the time limit for filing a notice of appeal, so that a divisional application under Article 76 EPC may be filed before the EPO even after the refusal of an application. [1] [2] [3] More specifically, the divisional application may be filed until expiry of the time limit of two months for filing a notice of appeal under Article 108 EPC. [3]

Contents

Background

In the European Patent Convention (EPC), Article 76(1) EPC provides for the possibility for applicants to file a divisional application based on a European patent application. The European patent application based on which the divisional is filed is then called the "parent application". In accordance with Rule 36(1) EPC, a divisional application can only be filed when the parent application is still pending. [4] [5] However, the EPC does not define the concept of "pendency". [4] The question therefore arose as to when exactly a European patent application is still pending after the application has been refused. According to the practice before G 1/09, a divisional application could no longer be filed after the application had been refused, [1] i.e. after the date of notification (Rule 126(2) EPC) of the decision of refusal in written or oral proceedings. [3]

Referral

The referral lies from decision J 2/08 [6] by the Legal Board of Appeal (i.e. Board 3.1.01). In the case underlying J 2/08, the applicant had filed a divisional application between the announcement of the decision on refusal at the oral proceedings and the notification of the written decision, without filing an appeal against the refusal. The EPO's Receiving Section refused to allocate the filing date of the parent application to the divisional, and, in appeal, the Legal Board of Appeal, confronted with that situation, decided to refer the matter to the Enlarged Board of Appeal. [1]

The referred question was: [7]

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(1) EPC) until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed?

Answer to the referred question

In its answer to the referred question, the Enlarged Board of Appeal ruled that "[i]n the case where no appeal is filed, a European patent application which has been refused by a decision of the Examining Division is thereafter 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." [7] Although the operative part of the Enlarged Board of Appeal decision is limited to a refusal by the Examining Division, nothing else can apply in the case of a refusal by the Receiving Section. [8]

The Enlarged Board of Appeal based its decision, inter alia, on the consideration that "pending" within the meaning of Rule 25 EPC 1973 (Rule 36(1) EPC) refers to European patent applications from which substantive rights were still in existence. [7] [3] [9] According to Article 67(4) EPC, substantive rights continue to exist until the European patent application was "finally refused", [10] and, according to generally recognised principles of procedural law, a decision only becomes final, i.e. it only becomes res judicata, when the time limit for appeal has expired. [7] [3]

Obiter dictum

The Enlarged Board also confirmed, in an obiter dictum, the established practice of the EPO that a divisional application under Article 76 EPC may be filed until the day preceding the date of publication of the mention of grant of a patent in the European Patent Bulletin, but "normally" [11] no longer on the date of publication of the mention of grant. [1] [12] [13]

Reception

According to Teschemacher and Schauwecker, the decision of the Enlarged Board of Appeal simplifies the applicant's life in case of a refusal of a European patent application. Indeed, if the applicant does not wish to challenge the decision of refusal of the parent application, but wants to pursue another subject matter through a divisional application, the applicant no longer needs to lodge and substantiate an appeal for purely formal reasons, only to keep a time window open for filing a divisional application. [14] [3]

Related Research Articles

<span class="mw-page-title-main">European Patent Office</span> One of the two organs of the European Patent Organisation

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.

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.

G 1/03 and G 2/03 are two decisions of the Enlarged Board of Appeal of the European Patent Office (EPO), which were both issued on April 8, 2004.

<span class="mw-page-title-main">Grant procedure before the European Patent Office</span>

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.

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.

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. 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.

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.

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.

Under the European Patent Convention (EPC), any third party –i.e., essentially any person– may file observations on the patentability of an invention which is the subject of a European patent application or, after grant, subject of a European patent, especially to draw the attention of the European Patent Office (EPO) to some relevant prior art documents. This is a form of public participation in the examination of patent applications.

G 1/19 is a decision issued by the Enlarged Board of Appeal of the European Patent Office (EPO) on 10 March 2021, which deals with the patentability of computer-implemented simulations.

G 1/21 is a decision issued on 16 July 2021 by the Enlarged Board of Appeal of the European Patent Office (EPO) regarding the legality of holding oral proceedings at the EPO by videoconference without the consent of the parties. Namely, the Enlarged Board of Appeal held that "[d]uring a general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference." The reasoning in the written decision further indicates that, if a party so requests, oral proceedings must be held in person at the EPO premises, except in absolutely exceptional cases.

G 1/10 is a decision issued on 23 July 2012 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that Rule 140 EPC cannot be used to request corrections of the text of a European patent.

G 2/10 is a decision issued on 30 August 2011 by the Enlarged Board of Appeal of the European Patent Office (EPO) on the subject of disclosed disclaimers. It lies from decision T 1068/07 by Technical Board of Appeal 3.3.08, who referred a question to the Enlarged Board.

G 1/11 is a decision issued on 19 March 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that a Technical Board of Appeal rather than the Legal Board of Appeal is competent for an appeal against a decision of an Examining Division refusing a request for refund of a search fee under Rule 64(2) EPC, which has not been taken together with a decision granting a European patent or refusing a European patent application. In other words, the decision deals with the delimitation of competence between the EPO's Legal Board of Appeal and its Technical Boards of Appeal.

G 1/12 is a decision issued on 30 April 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that an appellant's identity in a notice of appeal can be corrected under Rule 101(2) EPC, provided the requirements of Rule 101(1) EPC are met. The Enlarged Board of Appeal also held that an appellant's identity can be corrected under Rule 139 EPC, first sentence, under the conditions established by the case law of the Boards of Appeal.

References

  1. 1 2 3 4 Teschemacher, Rudolf (2011). "Aktuelle Rechtsprechung der Beschwerdekammern des EPA – Notizen für die Praxis" [Current case law of the Boards of Appeal of the EPO - Notes for practitioners]. Mitteilungen der deutschen Patentanwälte (in German) (7–8): 325. See section 1.3.
  2. ↑ Naumann, Kurt; Wichmann, Hendrik (2012). "Die Einreichung einer Teilanmeldung und deren Fristberechnung in der Praxis" [The filing of a divisional application and its time limit calculation in practice]. Mitteilungen der deutschen Patentanwälte (in German) (4): 168. In der Entscheidung G 1/09 wird die Anhängigkeit einer Anmeldung bezüglich der Einreichung einer Teilung im Falle der Zurückweisung neu definiert. Es gilt nicht mehr, wie bisher, der Tag der Rechtskraft der Entscheidung, sondern der Ablauf der Frist zur Einreichung einer Beschwerde (2 Monate).[Decision G 1/09 redefines the pendency of an application regarding the filing of a divisional in case of refusal. The day on which the decision becomes final is no longer applicable, as was previously the case, but the expiry of the time limit for filing an appeal (2 months).]
  3. 1 2 3 4 5 6 Schauwecker, Marko (2012). "Die Anhängigkeit der Stammanmeldung als Bedingung für die Teilung europäischer Patentanmeldungen – noch immer viele Fragen" [The pendency of the parent application as a condition for the division of European patent applications - still many questions]. GRUR Int. (in German): 410. See section II.1.
  4. 1 2 Schauwecker, Marko (2012). "Die Anhängigkeit der Stammanmeldung als Bedingung für die Teilung europäischer Patentanmeldungen – noch immer viele Fragen" [The pendency of the parent application as a condition for the division of European patent applications - still many questions]. GRUR Int. (in German): 410.
  5. ↑ Guidelines for Examination in the EPO , section a-iv, 1.1.1 : "Pendency of the earlier application"
  6. ↑ Decision J 2/08 (Pending application/SONY) of 27 May 2009
  7. 1 2 3 4 "Europäisches Patentübereinkommen – Große Beschwerdekammer entscheidet in der Rs. G 1/09 zum Begriff der „Anhängigkeit" gem. Regel 25 EPÜ 1973 (Regel 36 Abs. 1 EPÜ 2000)" [European Patent Convention - Enlarged Board of Appeal decides in Case G 1/09 on the concept of "pendency" under Rule 25 EPC 1973 (Rule 36(1) EPC 2000)]. GRUR Int. (in German): 1012. 2010.
  8. ↑ Schauwecker, Marko (2012). "Die Anhängigkeit der Stammanmeldung als Bedingung für die Teilung europäischer Patentanmeldungen – noch immer viele Fragen" [The pendency of the parent application as a condition for the division of European patent applications - still many questions]. GRUR Int. (in German): 410. Obwohl der Tenor der Entscheidung angesichts des zugrunde liegenden Falles ausdrücklich auf eine Zurückweisung durch die Prüfungsabteilung (Art. 97 (2) EPÜ) beschränkt ist, kann im Falle der Zurückweisung durch die Eingangsstelle (Art. 90 (5) EPÜ) nichts anderes gelten, d.h. auch hier muss die Anmeldung, ohne dass Beschwerde eingelegt wird, als bis zum Ablauf der Beschwerdefrist anhängig angesehen werden.[Although the operative part of the decision is expressly limited to a refusal by the Examining Division (Art. 97(2) EPC) in view of the underlying case, nothing else can apply in the case of a refusal by the Receiving Section (Art. 90(5) EPC), i.e. here too the application must be considered pending until the expiry of the appeal period without an appeal being filed.] See section II.1.
  9. ↑ Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (10th edition, July 2022), ii.f.3.5 : "Requirement of pending earlier application"
  10. ↑ Article 67(4) EPC
  11. ↑ G 1/09, point 4.2.3.
  12. ↑ Schauwecker, Marko (2012). "Die Anhängigkeit der Stammanmeldung als Bedingung für die Teilung europäischer Patentanmeldungen – noch immer viele Fragen" [The pendency of the parent application as a condition for the division of European patent applications - still many questions]. GRUR Int. (in German): 410. See section II.2.
  13. ↑ Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (10th edition, July 2022), ii.f.3.5.5 : "Pendency in case of refusal of earlier application against which no appeal was filed"
  14. ↑ Teschemacher, Rudolf (2011). "Aktuelle Rechtsprechung der Beschwerdekammern des EPA – Notizen für die Praxis" [Current case law of the Boards of Appeal of the EPO - Notes for practitioners]. Mitteilungen der deutschen Patentanwälte (in German) (7–8): 325. Die Entscheidung vereinfacht die Situation des Anmelders im Fall der Zurückweisung. Will er die Entscheidung nicht anfechten, sondern einen anderen Gegenstand im Rahmen einer Teilanmeldung weiter verfolgen, braucht er nicht länger aus rein formalen Gründen eine Beschwerde einreichen und begründen, nur um sich ein Zeitfenster für die Einreichung einer Teilanmeldung offen zu halten.[The decision simplifies the applicant's situation in case of refusal. If he does not want to challenge the decision, but wants to pursue another subject matter within the scope of a divisional application, he no longer needs to file and substantiate an appeal for purely formal reasons, only to keep a time window open for filing a divisional application.]

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