For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Wednesday, 28 May 2008

EP Divisionals - a reminder

Providing us with a further example of just how glacially the EPO moves, issue 5 of the Official EPO Journal has just been published, including the partially conjoined Enlarged Board of Appeal decision of G 1/05 & G 1/06. Every European patent attorney will already be familiar with this decision, as it first came out about a year ago, but it has taken this long for it to appear in proper official form, and in all three official languages of the EPO.

(Right: the EPO, pictured yesterday)


The effect of the decision was to bring back a certain degree of sanity to the EPO approach regarding divisional applications, after an apparently rogue Board of Appeal (in T 39/03) took the preliminary view that a divisional application containing subject matter not found in its parent application would be invalid on filing, and could not therefore be amended to correct this defect. This, of course, went against any sensible interpretation of Article 76 EPC taken until that time, causing much annoyance and confusion among patent attorneys, who had to then make doubly sure that any divisional applications they filed definitely had no added subject matter, just in case the decision was upheld by the Enlarged Board. The result was that many divisional applications were filed in the meantime that were identical to their parents, and the public was even less sure as to what the applicant actually wanted to obtain protection for.

Thankfully, and undoubtedly at least in part due to the contribution provided by the late Sir Nicholas Pumfrey, the Enlarged Board decided that the previous sensible approach was the correct one. The decision is well summarised by the headnotes:

"1. 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.

2. In the case of a sequence of applications consisting of a root (originating) application followed by divisional applications, each divided from its predecessor, it is a necessary and sufficient condition for a divisional application of that sequence to comply with Article 76(1), second sentence, EPC that anything disclosed in that divisional application be directly and unambiguously derivable from what is disclosed in each of the preceding applications as filed."

The IPKat also found the following comments, towards the end of the decision, particularly illuminating:
"13.5 On Article 76(1) and Rule 25 EPC [now Rule 36] as presently worded the Enlarged Board of Appeal sees no adequate basis for defining any additional requirements to be imposed on divisional applications beyond the requirements that all applications have to fulfil as well. It appears that what applicants consider a legitimate exploitation of the procedural possibilities afforded by the EPC, others consider an abuse in relation to the law as they think it ought to be rather than as it is. The Board finds it unsatisfactory that sequences of divisional applications each containing the same broad disclosures of the original patent application, by means of at least an unamended description, should be pending for up to twenty years. If administrative measures, such as giving priority to the examination of divisional applications and bundling and speedily deciding co-pending divisional applications so as to minimise the possibility for applicants to keep alive subject-matter on which the Examining Division had already given a negative opinion in one application by means of refiling the same subject-matter again and again, are not adequate, it would be for the legislator to consider where there are abuses and what the remedy could be."

Without wanting to make the EPO into Aunt Sally, the IPKat would like to gently point out that those who might like to curb the (sometimes perhaps over-enthusiastic) use by some applicants of all the legitimate options at their disposal under the EPC might like to review this decision again. If there really is any abuse of the existing system, the solution may need to be to change the law itself (difficult and long-winded as this may be, as evidenced by the long gestation period of EPC2000), and not to make life arbitrarily harder for all applicants.

13 comments:

nineman said...

>> If there really is any abuse of the existing system, the solution may need to be to change the law itself (difficult and long-winded as this may be, as evidenced by the long gestation period of EPC2000), and not to make life arbitrarily harder for all applicants.

Hear, Hear, IPKat! Sadly, from what I heard on the grapevine the EPO's idea for suitable legislation seems to be exactly to impose arbitrary time limits on divisionals, strangely reminiscent of the type proposed by USPTO and rejected by the US courts.

I will try to find out more - the missing piece of EPO legislation, as I see it, is the lack of any ban on double patenting - the EPO pretended for years that this was a principle that they could apply by action of Art 125 EPC, but the wool was pulled from our eyes in by a Board fo Appeal decision http://legal.european-patent-office.org/dg3/biblio/t980587ex1.htm

Anonymous said...

David,
Sir Nicholas would not have liked the insinuation implied by your allegation!

David said...

??

What am I supposed to be insinuating?

Anonymous said...

David,
I emphasize that I admire the IPKAT team for both the actuality, diversity and, not the least, the high level of the articles. It is definitely one of my favourite IP sites!
However, and perhaps you may not be aware of it, the articles sometimes contain quite arrogant personal views giving the impression of nationally based limitations with resulting negative bearing on the quality of the articles.
If it is still not clear what I mean in this case then ask any judge....

Since this is a response to your personal question I leave it to you whether to publish this response yes or no.

nineman said...

Anonymous - You've confused David and you've confused me. I wonder if you're posting on the wrong thread or something?

If you disagree with the EBA Decisions, or even if you think the EPO was not very slow in their publication, then talk to us about that, please. At present, your comments are simply riddles distracting from the substance of this important discussion.

Maybe I share David's "nationally based limitations", but as a practising patent attorney I fully agree that the effect of the EBA decisions was to restore a degree of sanity to proceedings which had been thoroughly confused by the decision T39/03.

Maybe you think 'rogue' has stronger connotations than the English reader would perceive in this particular context? There was I am sure no insunation of bad faith. The Enlarged Board only got invovled because there was evident contradiction between that decision and the exisiting cases.

David said...

I'm afraid it's still not clear to me, and I don't unfortunately know any judges that might be able to assist me. I didn't, however, think it would be controversial to point out that Sir Nicholas was one of the members of the EB that came out with this decision, nor could I see anything else in my post that would not also be expressed by many other patent attorneys.

As for "quite arrogant personal views giving the impression of nationally based limitations with resulting negative bearing on the quality of the articles", I'm afraid you've lost me again. This blog is not all about simply providing information (which would be boring), but is also about provoking discussion on often contentious issues. If you don't like my views, you can always choose either to ignore them, or to respond with your own. The latter could then result in what we call a debate (even though I think it is a little unbalanced having a debate with someone who chooses to remain anonymous). If you think I am being arrogant on a particular point, please tell me, but do also point out where I am wrong. Simply accusing someone of being arrogant is not enough.

Finally, as I have made clear before, comments to the IPKat are never rejected on the basis that he simply disagrees with them. Only comments that are blatantly offensive, libellous or spam are deleted.

Anonymous said...

"If you think I am being arrogant on a particular point, please tell me, but do also point out where I am wrong. Simply accusing someone of being arrogant is not enough".

Sorry, David I didn't want to offend you!
Nevertheless, I am astonished that you don't recognise the bias in
“Thankfully, and undoubtedly at least in part due to the contribution provided by the late Sir Nicholas Pumfrey, the Enlarged Board decided that the previous sensible approach was the correct one”.

David said...

Nope, still don't see it. Sir Nicholas, who was known to produce sensible judgments, was on the board. The decision was a sensible one. I therefore fail to see how that remark could possibly be construed as having a bias. It just happens that his was the only name I actually recognised.

Anonymous said...

David, I suppose the "insinuation" your interlocutor has imaginatively drawn from your words from England is that, but for the presence on the Board of an Englander, the Board would have come to a non-sensible conclusion. Lesson from all of this: you can't prevent sensitive people from taking offence, even when there is simply nothing there to get huffy about.

nineman said...

...on the other hand, unless you know the inner workings of the EBA on this particular case, was there any reason to highlight Pumfrey's role above any of the other members?

Anonymous said...

Thanks nineman for hitting the nail! Now please go back to my initial remark and you'll understand.
By the way, someone missed the fact that two brits were on that Board....

Anonymous said...

It was worth highlighting Pumfrey because:

1. I think he was the only member of the board who was also a judge (in any country). He was certainly the only knighted member of the board. Those things immediately make his name stand out in the decision.

2. He's recently deceased, which immediately makes it an interesting fact to mention - a decision published posthumously...

3. This is, after all, an English/British originating blog so highlighting the presence of a Brit on the panel is a perfectly sensible angle to take from a new perspective.

4. Some of the reasoning in the now overturned T decision referenced British law. So the presence of a British judge on the panel is of more than passing interest.

Anonymous said...

Certainly this person hasn't a clue who Sir Nicholas was.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':