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Wednesday, 7 August 2013

Stay or Split? - the Legal Board decides

The Legal Board of Appeal of the European Patent Office has recently confirmed that, while the prosecution of an application is subject to a stay of proceedings, a divisional filing cannot be made based on that application.

Rule 14(1) EPC allows third parties to request that the prosecution of a European patent application be stayed, on the basis that they have begun entitlement proceedings before a national court. Provided that evidence is provided that the proceedings have been initiated, then the stay is applied automatically, although it can be lifted at the discretion of the EPO. The stay commences as soon this evidence is provided.

Sure enough, in the present case, J 0009/12 Filing of a divisional application during stay of proceedings, 28 June 2013, a third party provided evidence of the commencement of entitlement proceedings to the EPO, who duly stayed the prosecution of the application (which was just about to grant). Before this stay was communicated to the applicant, the applicant filed a divisional application. However, this divisional application was filed after the third party provided the evidence of entitlement proceedings to the EPO. Consequently, the EPO’s Receiving Section found that the stay was in place prior to the filing of the divisional application, and the existence of the stay meant that this later application could not be treated as a divisional filing. The applicant appealed.  The appeal went to the Legal Board because the decision under appeal was made by the Receiving Section (Article 21(2) EPC)

The appeal decision is pleasingly anonymised, because the application in question is not published, lending the decision an exciting air of mystery that gets Merpel (international cat of mystery, remember) all excited.  The outcome, however, was probably never in doubt.

In a previous decision, J 20/05, the Legal Board of Appeal had ruled that a divisional application could not be filed whilst the parent application was subject to a stay. Although that case was decided under the EPC 1973, there had been no material changes to the relevant provisions under the EPC 2000 and the Legal Board of Appeal saw no reason to depart from the earlier reasoning. As the right to file a divisional application is a procedural right stemming from the applicant’s status as the applicant of the parent, a stay in relation to the parent prevented the applicant from exercising this right. To find otherwise would have circumvented the purpose or Rule 14(1) EPC, namely to preserve any rights the third party may have.

Adds the IPKat, if the applicant for the stayed application could simply continue to file divisionals, then the entitlement applicant could have a never-ending task chasing down all the newly filed cases.


Cat subject to a stay here

Divisional cats here

3 comments:

Suleman said...

I have a certain amount of sympathy here for the applicant since the parent was proceeding to grant, and now it must be unclear as to how much time will be available to file a divisional even if they win entitlement proceedings. The Board could perhaps have indicated in the decision that a definitive window would be available for a divisional filing once the stay was lifted.

Also it's nice to see EPO case law being given a little attention by the IPKat blog

Anonymous said...

What if the rule 36(1)(a) period has run out by the time the stay is lifted?

Anonymous said...

Indeed G1/09 already confirmed the approach in J20/05 (see reasons for the decision 3.2.5). However, this decision is very helpful since it additionally clarifies that the date of the suspension is decisive relative to the date of filing of the divisional and not the date of notification of the suspension to the original applicant.

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