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Tuesday, 3 July 2007

EPO Divisionals: you can now breathe again

The EPO Enlarged Board of Appeal has finally issued its decision on the various questions (summarised here and here) referred to it from different Technical Boards of Appeal (T 1040/04, T 1409/05 & T 39/03) regarding divisional applications. The referred questions related to the validity of applications filed under Article 76 EPC, including whether amendments could be made after filing to overcome subsequent objections regarding added subject matter. The Board ordered:

"So far as Article 76(1) EPC is concerned, a divisional application which at its actual date of filing contains subject-matter extending beyond the content of the earlier application as filed can be amended later in order that its subject-matter no longer so extends, even at a time when the earlier application is no longer pending. Furthermore, the same limitations apply to these amendments as to amendments to any other (non-divisional) applications."
The full decision, which of course goes into a lot more detail than this, is available for now via the epoline register until it makes its official appearance online.

The IPKat (with his patent attorney hat on) is very much relieved that the Enlarged Board has reached the obvious common sense solution. Any other outcome would have not only been very illogical but would also have caused a great deal of harm to the whole patent system in Europe. Merpel can only wonder why we had to change section 76(1) to address the very same issue regarding UK 'divisional' applications all those years ago.

3 comments:

Gerontius said...

The UK Act (section 76) was phrased somewhat differently than the EPC (Art 76 - is this the only example of tangency between the Act and the EPC?).

From my old printed copy of the Act:
"An [divisional] application for a patent shall not be allowed to be filed ... if the later application discloses matter which extends beyond that disclosed in the earlier application"

The EPC instead says:
"It [a divisional] may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed"

I believe one of the referrals explained how these two provisions could be interpreted differently due to the different phrasing, with the UK version resulting in death of an application while the EPC version did not necessarily mean that.

Whether that view is correct or not, it dead certain the G decision is the correct one to avoid implosion of the divisional system. Time to go read it and find out exactly how the Board justified it, though...

G

Gerontius said...

Ah, having now read the decision, it was the words "in so far as this requirement is complied with..." in the EPC but not in the UK act which were seen to be the most important difference leading the EBA to ignore the UK problems.

It's a great read, by the way, and I heartily recommend all US applicants who are used to filing continuations to avoid rejections rather than to actually pursue a different invention read paragraph 13.5 of the reasons very carefully... Hopefully the US legislators will pay attention too and realise that the best way to solve the current continuation problem is not to materially cut back on how many continuations can be filed.

Anonymous said...

I agree that it's a good read. The Enlarged Board panel included one Sir Nicolas Pumfrey. I wonder how active he was, in supplying text for the written decision

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