In its decision J 2/08 the Legal Board of Appeal of the European Patent Office (EPO) referred a question to the Enlarged Board of Appeal of the EPO regarding the pendency of applications within the meaning of Rule 36(1) EPC (i.e. as necessary for filing a divisional application). This referal to the Enlarged Board of Appeal has the case number G 1/09. The question referred to the Enlarged Board of Appeal reads as follows:

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?

In the case under appeal, the parent application had been refused by the Examining Division, i.e. in first instance, at the end of oral proceedings. The applicant filed a divisional application within the appeal period, however, without filing an appeal against the refusal of the parent application. The Receiving Section of the EPO did not consider the divisional application to be validly filed, arguing that the parent application was no longer pending when the divisional application was filed. Pendency of the parent application is, however, a requirement for validly filing a divisional application in accordance with the preamble of Rule 25 EPC 1973 (Rule 36(1) EPC).

At present, there are various points in time until when a patent application, in case of refusal, could be considered pending.

In case oral proceedings are held the following three points in time may be considered:

In written proceedings the following points in time may be considered:

When looking at the possible points in time, an applicant does not know beforehand the points in time WP1 and WP2 in the written proceedings and OP2 in case oral proceedings are held. This makes it impossible to determine the ultimate deadline for filing a divisional application.

Moreover, in case any of the points in time OP1, OP2, WP1 or WP2 were used to determine the pendency of an application, an applicant wishing to file a divisional application would either be required

Both above alternatives can be associated with unnecessary costs for the applicant.

For German patent practice, this question was answered in the decision entitled „Graustufenbild" of the Federal Court of Justice (BGH, decision of 28.3.2000 - X ZB 36/98 (BPatG), GRUR 2000, 688). There it is stated that even in absence of an appeal filed against the decision to grant, the applicant can divide the application before the expiry of the period for appeal against the decision. In the decision, the Court was of the opinion that it would not make sense to require an applicant wishing to file a divisional application to file an appeal with the sole purpose of establishing pendency. This would contravene the principle of procedural efficiency.

Download the full text of the decision J 2/08 „Pending application" of the Legal Board of Appeal of the EPO under:

http://www.mueller-bore.de/tl_files/Decisions_EPO/Pending_Application.pdf