Another EBA referral on divisionals

Thanks to Laurent Teyssedre's blog, the IPKat has learned of a new referral being made to the EPO Enlarged Board of Appeal relating to when divisional applications can be filed. The question being asked goes like this:
"Is an application which has been refused by a decision of the Examining Division thereafter still pending within the meaning of Rule 25 EPC 1973 (Rule 36(1) EPC) until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed?"
The decision leading to the question, J 2/08, has not yet been uploaded to the EPO's decision database, but can be found here, courtesy of Laurent. The case relates to European application number 05027368.9.

What happened during prosecution should be fairly clear, given the above question. The IPKat, who thinks that the answer to the question is a clear 'no', merely wonders why the applicant didn't follow the apparently normal (yet, in the EPO's eyes, abusive) procedure of filing a divisional application (without, of course, paying the fees) on the day before oral proceedings were scheduled, just on the off chance that their application was refused. Failing that, they could have filed an appeal just for the purpose of keeping the application pending. Couldn't they?
Another EBA referral on divisionals Another EBA referral on divisionals Reviewed by David Pearce on Thursday, June 11, 2009 Rating: 5


  1. Couldn't they?

    Yes, they could. As far as I understand, the appeal would not even have to be admissible. I guess they would have had to pay the appeal fee though, to prevent the appeal from being deemed not to have been filed (Art. 108 EPC, second sentence).

    I agree that the answer is "no", but I have the impression that the Legal Board is in favour of "yes". See e.g. point 39 of the reasons, where they seem to state that the present practice is in conflict with the suspensive effect of an appeal (which conclusion I don't get, an appeal's suspensive effect kicking in does not mean that a decision cannot have a legal effect before the filing of the appeal). The Legal Board goes on to list further "problems" of the present EPO practice (which I don't find easy to follow).

    I do agree with the criticism in point 41, first sentnce (last moment for filing a divisional differs depending on whether the decision was taken in oral proceedings or in writing), but that seems to be mostly a problem of G 12/91, which the Legal Board however refuses to reconsider.

    Now we're on this subject, does anyone really understand why an appeal filed against a decision to grant normally does not make the application "pending" again? Certainly such an appeal will normally be inadmissible, but an inadmissible appeal filed against a decision to refuse does make the application "pending" again. Is there a valid legal distinction between the two cases?

  2. Good point.

    And what about an appeal filed by a person who was not a party to the procedure ? Does it have a suspensive effect or not ?

  3. A person not party to the procedure cannot file an appeal (Art. 107 EPC). A party can only file an appeal if he is adversely affected by the decision (hence the inadmissibility of an appeal against the grant of a patent -J28/03), except where the wrong text has been granted (J12/83).

    The point by the first posting above is very interesting - the Board of Appeal has on one occasion clearly indicated that an appeal against the grant of a patent does not give rise to the possibility to file a divisional - (see the decision J28/03), it selectively denied the suspensive effect of the appeal in as far as it related to the possibility of filing a divisional. However, this does not appear to be in agreement with current Guideline A-IV, 1.1.1 and OJ Notice 2002, 112.

    It is understandable that the Board did this in that specific case, because to allow otherwise would circumvent the purpose of Rule 36 EPC (formerly Rule 25 EPC) and allow a back-door by which to file divisional applications after grant of the parent. However, this finding has broader implications relating to the suspensive effects of the appeal.

    Perhaps this point could also be dealt with in the decision of the Enlarged Board. However, in the case where a patent is refused, there is no confusion, the EPO will allow the filing of a divisional during appeal proceedings. Likewise, if the loss of rights with regard to the earlier application derived from a deemed withdrawal for failure to observe a time limit, then requesting further processing (applicable to most time limits under the EPC), would re-animate the parent and allow the filing of a divisional - see Guidelines A-IV, 1.1.1.).

  4. That's an interesting question. I don't know if there is case law on this, but I would think that an appeal filed by a person who was not a party is deemed to have been filed, but inadmissible. So if such an appeal is filed against a decision to refuse, it should have suspensive effect.

    Of course, this outcome is sufficiently ridiculous that I am sure the Boards would find a way to deny suspensive effect.

  5. J 1/92 confirms that an appeal filed by a person who is not a party is inadmissible. In that case, the appeal was filed by the representative in his own name.

    So according to the current case law, if the patent application of applicant A is refused and unrelated person B files a timely appeal against the refusal, applicant A can file a divisional until B's appeal has been dismissed as inadmissible.

    This seems wrong to me.

    In my view, "suspensive effect" should have nothing to do with the application becoming "pending" again. To become "pending" again, an appeal against a refusal decision should be at least admissible and maybe even allowable.


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