An EPO decision has instigated a radical change in the understanding of the last point in which a divisional may be filed.
A decision J1/24 from the Legal Board of Appeal of the European Patent Office (see also factually corresponding J2/24) has recently been handed down. J1/24 has radically changed the long‑understood view that a divisional patent application of a European patent application can only be filed up until the day before the date of the mention of grant of a European patent.
The principle established by the Board in J1/24 is that a divisional application of a European patent application can be filed after an original date of publication of the mention of grant of the patent provided that certain steps are taken by the applicant to appeal the decision to grant of the patent. The principle thus established is discussed below.
Facts
J1/24 is an appeal from an interlocutory decision of the Receiving Section, the decision of which was a refusal to treat a European patent application as a divisional application on the basis of the Receiving Section’s view that the application did not relate to any pending earlier European patent application under Rule 36(1) EPC.
The divisional application was filed after the original date of the published mention of the grant of the parent European patent application. According to conventional understanding, this fact would lead most to conclude that the European patent application cannot be considered a divisional application under Rule 36(1) EPC. However, as will be seen from the circumstances of this case, it cannot be concluded from this fact alone that the divisional has not been validly filed.
After the date of the mention of the grant of the patent but within two months from notification of the decision to grant, the applicant filed a notice of appeal against the decision to grant of the parent application and paid the appeal fee, which led to the rescinding of the date of publication of the mention of the grant of the patent by the EPO. Note that the applicant’s grounds of appeal had not been filed at this stage.
The applicant then filed their grounds of appeal and later withdrew their appeal against the decision to grant of the patent, thereby triggering a loss of rights notification from the Receiving Section (regarding the status of the divisional application) and the Examining Division to issue a communication advising on the new publication date of the mention of grant. An adverse interlocutory decision from the Receiving Section refusing to treat the European patent application as a divisional. The decision from the Receiving Section cited J 28/03 and was issued following a request from the applicant for a decision on the state of the file. The adverse decision was appealed by the applicant leading to the present decision J 1/24.
The Board in J 1/24 set aside the decision of the Receiving Section and remitted the case on the order that the European patent application be treated as a divisional application.
The Board’s reasoning
A divisional application can only be filed on an earlier European patent application that remains pending. However, referring to the jurisprudence of the enlarged Board of Appeal decision G1/09, the board reiterated that there is no definition of “pending” under the EPC, but pending means a patent application in a state in which substantive rights deriving therefrom under the EPC are (still) in existence. One example of substantive rights deriving from a patent application being provisional protection under Article 67 EPC.
The present Board’s view is that the rescinding of the date of publication of the mention of grant as a consequence of the filing of the appeal against the decision to grant prevented the grant of the application becoming effective, and so the provisional rights conferred by the European patent application still applied.
The Board contrasted the situation with J 28/03 in which the rescinding of the published date of the mention of grant did not occur[1] following the filing of an appeal against the decision to grant of a European patent. The Board criticised the approach in J 28/03, and it can be derived from the Board’s reasoning that appeals against the decision to grant and resulting in the publication of the grant of the patent are not necessarily expected to be inadmissible under Article 107(1) EPC. The Board go further to state that it is inconsistent to consider an appeal in two different ways: first for the mention of the grant to be deleted, the appeal only needs to be admissible; and second for the suspensive effect to apply is dependent on the outcome of the appeal.
Current practice at the EPO dictates that the rescinding of the published date of the mention of grant should occur after an appeal against the decision is filed because as highlighted by the Board, such appeals are currently considered to be validly filed and have suspensive effect. The suspensive effect is not dependent on the outcome of the appeal.
For the present case, the parent application was therefore considered to be pending at the time the divisional was filed, despite the filing being after the originally published but later rescinded date of the mention of grant.
Discussion
According to current EPO practice, if an appeal against the decision to grant of a European patent is validly filed, which requires only the filing of a notice of appeal and payment of the appeal fee, the date of the mention of grant is rescinded by the EPO. A new date is then set following withdrawal or failure of the appeal, which allows for the filing of a divisional application in the period up until the day before the new date set for the mention of grant.
This new practice established by J 1/24 is great news for applicants where oversight has led to the missed opportunity to file a divisional before the grant of their European patent, but this this new backup option should only be used only in exceptional circumstances. Day‑to‑day practice should not change, and a divisional application should always be filed well in advance of, or at the very latest, on the day before the date of the mention of grant of a European patent application.
J 1/24 also raises the question of what happens to the status of an early-filed opposition to a European patent when the decision to grant of that European patent is appealed? Although early-filed oppositions are rare, they can and do occur. Applying the reasoning of the Board, after the rescinding of the published date of the mention of grant, an opposition could not be validly filed under Article 99(1) EPC since the mention of the grant of the European patent has effectively not occurred. However, what would happen to an opposition that has already been validly filed before the rescinding of the date of the mention of grant of the patent?
According to the logic applied by the Board, the rescinding of the date of the mention of grant effectively prevents the grant of the patent. The rescinding therefore must be considered to have retroactive effect insofar as the European patent application should be considered pending even before the rescinding of the mention of grant. Accordingly, an early-filed and initially admissible opposition in such a circumstance should be considered by the Opposition Division to be inadmissible since the European patent application would be deemed to have not yet granted. The same logic also applies to a divisional application filed after an original date of the mention of grant but before the rescinding of the mention of grant. Such a divisional application should be considered to have been validly filed.
It follows that if an early opposition is filed within the two-month period from the notification of a decision to grant, applicants may now have an opportunity to effectively render the opposition inadmissible by appealing the decision to grant. A divisional application could also then be filed as a backup by the applicant, which may be advantageous if a pre‑emptive divisional application has not already been filed.
It also appears from the Board’s decision that the pendency status of the European patent application is not dependent on the admissibility of the appeal, save as for clearly inadmissible appeals (e.g., an appeal filed by a third party). Accordingly, an applicant should not need to file grounds for appeal to avail themselves of the suspensive effect of the appeal against the decision to grant. Indeed, it seems that the applicant could withdraw the appeal before the deadline for filing of the grounds of appeal and obtain a refund of the appeal fee in full yet still benefit from the rescinding of the mention of grant.
A divisional application could therefore be filed after the original date of the mention of grant and incur no additional net administrative costs than filing a divisional application before that date, since the appeal fee for an appeal against the decision to grant may be refundable.
Although this decision is applicant friendly, it is arguably problematic for the certainty of third parties. On the one hand, the decision provides certainty that when an appeal against the decision to grant of a European patent has been filed, the European patent application will undoubtedly remain pending because of the suspensive effect and the rescinding of the mention of grant. However, if a third party were to form an opinion of their freedom to operate between the original date of the mention of grant and the rescinding of the published mention of grant, they might except there could be no further divisional applications derived from that European patent application. Practitioners should therefore be wary and not rule out the possibility of a divisional application of a European patent until at least two months after the decision to grant has occurred.
If you would like to discuss the issues raised in this article, or if you have any queries, please contact Stuart Forrest or your usual contact at WP Thompson.
[1] However, according to current EPO practice, the rescinding of the mention of grant should have occurred according to the factual circumstance of J 28/03.