Filing EP Divisionals After the Mention of Grant is Published

--- Wait, what? I thought you can’t do that!

When is the last point in time at which you can successfully file a divisional application on an EP application? The common answer is “as long as the application is pending”, which means until the end of the appeal proceedings if an appeal is filed against a rejection. But if the appeal is filed against a grant decision, then J 0028/03 states that it depends on the outcome of that appeal:

“The status of a divisional application filed while an appeal against the decision to grant a patent on the parent application is pending depends on the outcome of that appeal. Therefore, the department of first instance cannot decide on the question whether the divisional application has been validly filed until the decision of the Board of Appeal on the appeal is taken.”

So, according to J 0028/03, if the patent is granted as requested, then an appeal may not have the desired suspensive effect to open the possibility of filing a divisional. For that reason, the common wisdom is that if a patent is granted or about to be granted, then you better file your divisional on the last day prior to the mention of grant in the European patent bulletin 

Along comes decision J 0001/24 (and factually identical J 0002/24), published on April 16, 2024, overturning this common wisdom. In this case, the mention of grant (as requested) was published on March 17, 2021. On April 16, 2021, the applicant filed a notice of appeal against the decision to grant. On May 6, 2021, the Exam. Division then issued a communication stating that “the date of publication of the mention of the grant of 17.03.21 has been deleted” and that this deletion will be published in the EP Bulletin of May 26, 2021 (see image).

On May 24, 2021, the applicant then filed a divisional application and withdrew the appeal on April 7, 2022. On May 18, 2022, the Receiving Section issued a noting of loss of rights, citing J 0028/03. After all, the appeal was withdrawn, so that the last day to validly file a divisional had been on March 17, 2021, i.e. the day before the mention of grant was published. The Exam. Division then set a new publication date for the mention of grant (of the earlier application) of June 25, 2022. The decision that the (later) application will not be treated as a divisional then became final on September 14, 2023 and is subject to the present appeal.

The Board starts by pointing out that there is no definition of the term “pending application” in the EPC, and that a pending application is one from which substantive rights can still be derived (see G1/09). Such rights include the rights of provisional protection of Art. 67(4) EPC, effective until the application “has been withdrawn, deemed to be withdrawn or finally refused”. Hence the suspensive effect of filing an appeal against a refusal – after all, the application is not yet “finally refused”.

The Board then notes that the deletion of the mention of grant prevented that the grant from taking effect, so that the same substantive rights (i.e. provisional protection) were still in existence. The Board went on:

“The present board considers that is 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 [Note FH: Don’t they mean “validly filed”?]; and second for the suspensive effect to apply is dependent on the outcome of the appeal.

If this inconsistent approach were to be adopted, the situation would be uncertain and unclear especially for third parties, that could not know whether a patent application is still pending, as this would depend on the outcome of the appeal proceedings. There is no basis in Article 106(1) EPC for such an approach.

…

As a consequence such an appeal [against grant of a patent] has suspensive effect according to Article 106(1) EPC, second sentence, EPC. That means for the present case that the parent patent application was still pending when the divisional application was filed.”

Lesson learned: If you missed the “deadline” for filing a divisional of the day prior to the mention of grant, then not all is lost. It is still possible to file a divisional if an appeal against the grant decision is validly filed.

Note further that the filing date of the divisional in this case was May 24, 2021, two days prior to the deletion of the mention of grant of in the EP Bulletin on May 26, 2021. Thus, it does not seem to be necessary to wait until deletion of the mention of grant is deleted before filing the divisional.

Article by Friedemann Horn, Patent Attorney at HKW Intellectual Property