G 1/09: When is a patent application pending?

Once a patent application has been filed, and before it has been granted, refused or withdrawn, the application is considered to be "pending", i.e. awaiting some further action before a final decision is taken.  One thing that can only be done while a European application is pending is filing of a divisional application.  If the application has already been granted, or has been refused or withdrawn, or if the two year period under Rule 36 has passed, it is too late.  Or is it?

A strange situation arises in the case of an application that is refused at the end of oral proceedings at the EPO.  At that point, one would think, the application becomes no longer pending and, consequently, it is no longer possible to file a divisional.  However, if an appeal is then filed against the decision the application miraculously becomes pending again, because otherwise a final decision by an appeal board could not be taken.  

The question then is: is a European patent application that has been refused at oral proceedings still pending during the time allowed in which to file an appeal?  Does it even matter if an appeal is filed to make the application pending again? 

This was the situation for EP application 01102231.6, which was refused by the examining division in oral proceedings held on 23 November 2005.  On 14 December 2005, the applicant filed a divisional application, i.e. within the time allowed for filing an appeal against the decision. They did not, however, file an appeal in time.  

The EPO then took the view that, because the pending earlier application has been finally refused, the application could not be processed as a divisional.  The EPO issued a decision to this effect, which the applicant then did appeal against.  

In decision J 2/08, the board of appeal decided that they could not decide on the meaning of the word "pending", and instead decided to refer the following question to the Enlarged Board of Appeal:
"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(2) EPC) until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed?"
At this point, the IPKat thought that there were good arguments either way, and could not decide himself which way the question should be answered.  It did seem, however, a bit odd that an application could be considered to have been pending only in retrospect, which would be the inevitable result of the EPO's apparent view in 2006.

After a mere 16 months of deliberation, the Enlarged Board have now issued their decision, which is available via the EP register for the divisional application 05027368.9, and presumably shortly to appear on the EPO decisions page.  To cut what is a long story short (there is much pontification in the decision, which the IPKat's readers can peruse and comment on at their leisure), the Enlarged Board concluded:
"[U]nder the EPC a patent application which has been refused by the Examining Division is thereafter still pending within the meaning of Rule 25 EPC 1973 until the expiry of the period for filing an appeal and, on the day after, is no longer pending if no appeal is filed.  The same conclusion applies to Rule 36(1) EPC 2000 both in its former and its current version."
Or, in other words, in answer to the actual question raised: yes.

We can all now breath a sigh of relief, and get back to all those divisional applications that have to be filed by Friday.  

The IPKat thanks Simon Roberts (BT) for the tip.
G 1/09: When is a patent application pending? G 1/09: When is a patent application pending? Reviewed by David Pearce on Wednesday, September 29, 2010 Rating: 5


  1. So, in particular, it is possible to file a divisional this week for an application that has been refused during oral proceedings, but for which no appeal has been filed, e.g. because the written decision has not yet been issued. (This is also relevant for future cases.) Should the answer have been negative, it is conceivable that such a divisional would retroactively become valid upon the filing of an appeal, but I don't think we know this for sure.

    If I understand the reasoning of G 1/09 correctly, a divisional may now also be filed during the period in which further processing can be requested.

    Can a divisional still be validly filed during the period in which re-establishment of rights can be requested? In view of G 1/09 I'm not convinced the answer is no.

    Note that the decision answers this tricky European patent question: how to file a divisional for a Euro-PCT bis application without paying any fees, if possible, for the Euro-PCT bis application.

    According to G 1/09, r. 3.2.5, a divisional cannot be filed before the 31-month period runs out or the applicant expressly requests early processing. If no fees are paid, and no entry into the regional phase is requested at all, the application is considered deemed to be withdrawn from the date on which the 31-month limit expires. At that time, further processing is still possible. Therefore, a divisional can be filed. No fees need to be paid and no acts need to be performed at all for the parent Euro-PCT bis application.

  2. So because someone mixed up German and European procedural patent law, we now will all file our divisionals AFTER oral proceedings instead of before.

    If that two-year period is still running....

    Aside from that, my mind is working high-speed to figure out what loopholes this may create of which the legislator thought they did not exist or were actually plugged :-)

  3. Well, somone asked me ealiery this week, can a divisional be filed validly within the period after a renewal fee was not paid, if the additional fee is not paid.

    My answer at that time was probably not, but does everyone agree this situation is analogous to the G1/09 situation? Can I file a divisional on a lapsed application, provided I do so within the 6 month grace period?

  4. There is clearly some difference between a refusal by the examining division with the option of an appeal that has suspensive effect, and deemed withdrawal due to inaction. I wouldn't want to rely on this decision in any scenario that wasn't directly analogous.

  5. Not on-line at the moment you can't!

  6. @Anon:
    "Well, somone asked me ealiery this week, can a divisional be filed validly within the period after a renewal fee was not paid, if the additional fee is not paid."

    During the 6 month grace period for paying the renewal fee and additional fee, the application is still fully alive, so there can be no doubt that a divisional can be filed. This is independent from the outcome of G 1/09.

    Once the 6 month grace period has expired, the application is deemed to be withdrawn and further prosecution is not possible. At that point, filing a divisional is probably not possible anymore.

  7. @Gobhicks:
    Although the EBA states that the suspensive effect of an appeal is not the reason that a divisional can be filed during the appeal period, I might indeed be a little too quick to conclude that a divisional can validly be filed during a period in which the application is deemed to be withdrawn and further processing can be requested.

    The EBA relies heavily on Art. 67(4) EPC, which provides that an application shall be deemd never to have had the effects of provisional protection when it has been "withdrawn", "deemed to be withdrawn" or "finally refused". The EBA then reasons that an application is "finally refused" only when the appeal period has expired. However, there is clearly no need for the period for requesting further processing to have expired for an application to be "deemed to be withdrawn".

    Since r. 3.2.4 stresses that an application is pending if it is in a status in which "substantive rights" deriving from the application under the EPC are (still) in existence, I guess it could be argued that an application is not pending if it is "deemed to be withdrawn", even though the applicant can simply request further processing and thereby revive those substantive rights retroactively.

    So for the moment I withdraw my earlier suggestion that a divisional may now also be filed during the period in which further processing can be requested.

    Does a European patent application give rise to any other "substantive rights" apart from the provisional protection of Art. 67? Given that provisional protection only exists from the date of the publication of the application, one could wonder if any "substantive rights" exist before the publication... If that is not the case, G 1/09 seems to suggest that a divisional application cannot be filed before publication. This is almost certainly not the intention of the EBA, but still.

    What other substantive right am I missing?

    Is it sufficient that future publication and therefore future provisional protection is more or less guaranteed once various fees have been paid and various acts have been performed? Even if that is the case, it would be required to pay those fees and performs those acts before a divisional can be filed.

    Is there anybody else who believes that G 1/09 might imply that a divisional cannot be filed before publication of the (parent) application?

  8. With regard to invoking provisional rights from an unpublished application, Art.128(2) EPC does mention that if a third party can prove that the applicant has invoked rights of his unpublished application against him, he can inspect the file before the application is published. This appears to be in conflict with Art.67(1) EPC which provides provisional protection only from the date of publication of the application. However, Art.67 does not preclude EPC states from attributing rights to an unpublished application and so this may arise in certain EPC states under national provisions. Indeed the appeal case J14/91, this occurred with regard to rights deriving from the priority application (in Germany), where the subsequent European application was mentioned at the same time (this is also in the EPO Guidelines A-XII, 2.5).

    With regard to whether or not a divisional application can be filed before publication of the parent, Art.128(3) indicates that where a divisional is published before the parent application, then the file on the unpublished parent becomes publicly available. This implies that not only filing of the divisional is possible before filing of the parent, but also that the divisional might be published before the parent (possibly as a result of a request for early publication of the divisional according to Art.93(1)(b) EPC).

  9. Art 67(2) EPC provides that the rights in an EP application may not be less than those of a corresponding national application. Table III.A Col 4 of "National law relating to the EPC" indicates that the national laws of about half of the EPC states have provisions for serving a copy of the claims of your EP application [in translation if appropriate] to a third party, and this would cause Art 128(2) EPC to kick in. I seem to recall that, for France at least, serving a translation can be made before the application is published. No personal experience.

  10. @Anonymous:
    Thanks for pointing me at Art. 128(2) EPC and J 14/91. However, for the moment I doubt that rights having a basis only in national law are "substantive rights deriving from the application under the EPC".

    Btw, Visser seems to suggest that Art. 128(2) refers to early warnings that rights under Art. 64 or 67 may be asserted upon grant or publication. If the possibility of giving such an early warning itself counts as a "substantive right", then surely the same holds for the possibility of giving an early warning that after requesting further processing, the rights under Art. 67 may be asserted.

    So in my view:
    - either the prospect of provisional protection is a substantive right in the sense of G 1/09, r. 3.2.4 already before the publication AND at a time when the application is deemed to be withdrawn but further processing may still be requested,
    - or the prospect of provisional protection is not a substantive right, and Art. 67 only gives rise to a substantive right from the date of publication of the application (and until the application has been withdrawn, deemed to be withdrawn or finally refused, or a patent has been granted).

    Art. 128(3) EPC indeed is a clear indication that in principle an application can be divided before its publication. Still, this does not explain what "substantive rights deriving from an application under the EPC" are in existence before the publication of the application. Of course, Art. 128(3) EPC was drafted well before G 1/09 was decided ;-)

  11. @Myshkin - G1/09 contains a few other interesting bits and pieces - in particular, it confirms J20/05 in finding that a divisional cannot be filed during a suspension of proceedings [thus avoiding the same application pending to different owners - one under Art.76 and one under Art.61]. As you say, the matter is not fully clarified. I believe that the rights invoked which are referred to in Art.128(2) are determined by national law (not the EPC) since they relate to relief for allegedly infringing or future infringing activities, which is not governed by the EPC (Art.64(3) and Art.67(1)(2)), so whether the rights are acquired when the third party is allowed to inspect the file or can only be applied on official publication would probably depend on the laws of the state where the action is being threatened/brought. It is an interesting point of law.

    It is hard to see how a decision of an EPO Board of Appeal could settle the issue of whether or not publication and the provisional protection and definitive protection under Articles 67 and 64 respectively, because such matters are the exclusive domain of the laws of the member states. As you indicate this could come up indirectly, in a further appeal on the very point you raised as to whether or not Art.121 gives rise to an analogous right, I await the case when it arises with great interest.

  12. Does anyone have a view as to whether J4/11 means that it is NOT possible to file a divisional during the period that further processing is available (if further processing is not actually requested)?

  13. To Myshkin at Thursday, 30 September 2010 at 20:37:00 BST, please note that the language of Article 86(3) EPC in EPC 2000 is different from the language of Art 86(3) EPC 1973, so that in the new version a literal reading would mean that the application is deemed withdrawn at the anniversary, and not at the end of the 6 month grace period. Visser raises this as a genuine issue in his commentary on Article 86(1) EPC 2000, and says it would impact on the filing of a divisional in the 6 month grace period.

  14. I think T1402/13 confirms that European practice has changed post-EPC2000 on when an application is deemed withdrawn on failure to pay a renewal fee, i.e. at the point of failing to pay the renewal fee and no longer at the end of the 6 month grace period. See the link below to the Delta Patent blog on this.


    Importantly divisional applications should not be filed in the 6 month grace period!


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