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.