European Practice on Divisional Patent Applications Confirmed by the Enlarged Board of Appeal

The legal uncertainty surrounding the validity of divisional patent applications before the European Patent Office (EPO) has recently been addressed in two decisions of the Enlarged Board of Appeal (EBA). The EBA decisions are welcomed as largely confirming the established EPO practice which existed prior to the referrals to the EBA.

Background
A divisional application is an application that contains subject matter and is derived from an earlier filed "parent" application. The divisional application retains the filing date/priority date of the parent application as filed.

It has also been established EPO practice to be able to file a further divisional from a divisional application to give rise to a sequence of divisional applications.

Over many years, the EPO has developed and followed a practice that was generally flexible to Applicants when filing divisional applications. This practice was brought into question by some decisions from the Boards of Appeal and was referred in a number of cases to the EBA (the EPO's highest level of authority), which heard the two references under G0001/05 and G0001/06 together (see footnote 1)

Decisions

• In answering the question whether a divisional application can be amended after filing to remove added subject matter, the EBA's answer was "yes". It stated that a divisional application is a new application which is separate and independent from the parent application and is to be treated the same way as an ordinary European application. According to the EBA, Applicants should be afforded the opportunity to amend their application once it has been filed.
• The EBA also decided that amendments to remove added matter in the divisional application were allowable irrespective of whether the earlier application is still pending.
• The EBA also held that amendments to divisional applications are allowable to the same degree as amendments to any other non-divisional applications.
• In the case of a sequence of applications consisting of a root (originating) application followed by a sequence of divisional applications, each divided from its predecessor, the contents of each preceding divisional application in a sequence may be included in a new divisional application. An Applicant is not restricted only to subject matter that was encompassed by the claims of a preceding divisional application.

Implications
The EBA's decisions are to be welcomed as being sensible and favourable for Applicants allowing divisional applications to continue to form a vital part of a patenting strategy.

This is not an exhaustive review. For further information please contact D Young & Co.

DISCLAIMER: This bulletin is intended to provide information of a general nature and is provided solely for the interest of the reader. Nothing in these pages constitutes legal or other professional advice.

Footnotes

The questions that were referred to the EBA were:

G1/05

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?
2. If the answer to question 1 is yes, is this still possible when the earlier application is no longer pending?
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?

G1/06

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?

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