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In its recently published Decision G 1/09, the Enlarged Board of Appeal of the EPO provided clarification as to until when an application which has been refused is considered to be pending. In particular, the Enlarged Board of Appeal decided that

“in the case where no appeal is filed, a European patent application which has been refused by a decision of the Examining Division is thereafter pending (…) until the expiry of the time limit for filing a notice of appeal.”

In other words, an application which has been refused is still considered to be pending within the time period for filing an appeal - even if no appeal is filed.

This decision is of importance for the filing of divisional applications. According to the EPC, a divisional application may be filed for “any pending earlier European patent application”, provided that the further requirements and time constraints of the EPC regarding the filing of divisional applications are fulfilled.

In view of the decision, for an application that has been refused, a divisional application can still be filed within the appeal period without the necessity of filing an appeal (keeping in mind the further time constraints given in Rule 36(1) EPC for filing divisional applications).

Thus, the time limits until when a European patent application is considered as pending are as follows:

a) if a decision to grant is issued, until the day before publication of the mention of the grant in the European patent bulletin, and

b) if the application is refused and no appeal is filed, until the expiry of the appeal period.

For German patent practice, this question was answered in a similar way 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). The decision states that even in absence of an appeal filed against a decision to grant, the applicant can divide the application before the expiry of the period for appeal against the decision.

Download the full text of the decision G 1/09 “Pending application” of the Enlarged Board of Appeal under:

http://www.mueller-bore.net/tl_files/Decisions_EPO/G1_09_Pending_Application.pdf

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