|
On 28 June 2007 the Enlarged Board of Appeal of the European
Patent Office (EPO) issued two long-awaited decisions regarding divisional
applications. It had been feared that,
in an attempt to prevent perceived abuses by patent applicants
and to provide greater legal certainty for third parties, the decisions
could result in additional restrictions being imposed on divisional
applications. The decisions have instead
confirmed existing practice.
The decisions of the Enlarged Board
of Appeal are concerned with the interpretation of part of Article 76(1) of the
European Patent Convention (EPC), the relevant sentence of which states, “[A
European divisional application] may be filed only in respect of subject-matter
which does not extend beyond the content of the earlier application as filed;
insofar as this provision is complied with, the divisional application shall be
deemed to have been filed on the date of filing of the earlier application and
shall have the benefit of any right to priority.”
Under existing practice, as set out
in Chapter C-VI, 9.1.4 of the Guidelines for Examination in the EPO, where a
divisional application was filed which did not meet the requirements of Article
76(1) EPC (i.e. that contained subject-matter additional to that
contained in the earlier or parent application as filed) the EPO allowed the
applicant to amend the divisional application during prosecution to remove the
additional subject-matter, and so conform with Article 76(1) EPC.
In a number of recent cases before
the Technical Boards of Appeal this practice was questioned and it was
suggested that a divisional application that did not comply with Article 76(1)
EPC on filing was “invalid” and could not subsequently be made “valid” by a
later amendment removing the additional subject-matter.
If it had been upheld by the Enlarged Board of Appeal,
the latter interpretation of Article 76(1) EPC would have had serious
repercussions for applicants wishing to seek protection in a divisional
application for subject-matter that was disclosed but not claimed in the parent
application. If claims to the previously
unclaimed subject-matter were included in the divisional application on filing,
the divisional application could be deemed irretrievably “invalid” if the
claims were held to contain subject-matter additional to that contained in the
parent application as filed. If the
divisional application were filed with the same claims as the parent
application, the applicant would not be able to amend the divisional
application to include claims to the previously unclaimed subject-matter until
after receipt of the search report.
However, Rule 86(4) EPC states, “Amended claims may not
relate to unsearched subject-matter which does not combine with the originally
claimed invention or group of inventions to form a single general inventive
concept”. Consequently,
the applicant in such circumstances would have found themselves in a no-win situation. If they amended the claims of the divisional
application before filing they risked the divisional application being deemed
irretrievably “invalid”, but if they did not they risked not being able to
obtain protection for the previously unclaimed subject-matter in the divisional
application.
To clarify how Article 76(1) EPC
should be interpreted, the following questions were referred to the Enlarged
Board of Appeal in case number G1/05:
(1) Can
a divisional application which does not meet the requirements of Article 76(1) EPC
because, at its actual filing date, it extends beyond the content of the
earlier application, be amended later in order to make it a valid divisional
application?
(2) If
the answer to question (1) is yes, is this still possible when the earlier
application is no longer pending?
(3) If
the answer to question (2) is yes, are there any further limitations of
substance to this possibility beyond those imposed by Articles 76(1) and 123(2)
EPC [the latter states, “A European patent application or a European patent may
not be amended in such a way that it contains subject-matter which extends
beyond the content of the application as filed.”]? Can the corrected divisional application in
particular be directed to aspects of the earlier application not encompassed by
those to which the divisional as filed had been directed?
In the decision, the Enlarged Board
of Appeal confirmed existing practice and answered “Yes” to questions (1) and
(2), “No” to the first part of question (3) and “Yes” to the second part of question
(3) and concluded, “So far as Article 76(1) EPC is concerned, a divisional
application which at its actual date of filing contains subject-matter
extending beyond the content of the earlier application as filed can be amended
later in order that its subject-matter no longer so extends, even at a time
when the earlier application is no longer pending. Furthermore, the same limitations apply to
these amendments as to amendments to any other (non-divisional) applications.”
The second decision issued by the
Enlarged Board of Appeal on 28 June
2007 was concerned with the application of Article 76(1) EPC to a
sequence of divisionals, that is, a number of divisionals each divided from its
predecessor. Under existing practice,
the EPO found a divisional application of such a sequence to comply with
Article 76(1) EPC if the subject-matter of the divisional application was
disclosed anywhere in each of the preceding applications of the sequence
as filed.
This practice was also recently
questioned in cases before the Technical Boards of Appeal and it was suggested
that in order to comply with Article 76(1) EPC the subject-matter of a
divisional application of such a sequence must be within the scope of the claims
of the preceding applications in the sequence as filed.
To clarify how Article 76(1) EPC
should be interpreted in relation to a sequence of divisional applications, the
following questions were referred to the Enlarged Board of Appeal in case
number G1/06:
(1) In
the case of a sequence of applications consisting of a root (originating)
application followed by divisional applications, each divided from its
predecessor, is it a necessary and sufficient condition for a divisional
application of that sequence to comply with Article 76(1) EPC, second sentence,
that anything disclosed in that divisional application be directly,
unambiguously and separately derivable from what is disclosed in each of the
preceding applications as filed?
(2) If
the above condition is not sufficient, does said sentence impose the additional
requirement
(a) that
the subject-matter of the claims of said divisional be nested within the
subject-matter of the claims of its divisional predecessors? or
(b) that all the divisional predecessors
of said divisional comply with Article 76(1) EPC?
In the decision, the Enlarged Board
of Appeal again confirmed existing practice and answered “Yes” to question (1),
and so found it unnecessary to answer question (2), and concluded “In the case
of a sequence of applications consisting of a root (originating) application
followed by divisional applications, each divided from its predecessor, it is a
necessary and sufficient condition for a divisional application of that
sequence to comply with Article 76(1), second sentence, EPC that anything disclosed
in that divisional application be directly and unambiguously derivable from
what is disclosed in each of the preceding applications as filed.” As pointed out by the Enlarged Board of
Appeal in their decision, divisional applications of the second generation make
up less than 0.5% and later-generation divisional applications less that 0.05%
of all European applications. In
practice the decision will, therefore, be relevant only to a very limited
number of applications.
There is no further line of appeal
from either of the Enlarged Board of Appeal’s decisions and additional
restrictions on the filing of divisional applications at the EPO could now only
be introduced through changes in legislation.
The EPC 2000, which does not come into effect until late this year, does
not include any changes to the articles of the EPC governing the filing of
divisional applications, and so it is extremely unlikely that any such
legislative changes will be introduced in the foreseeable future.
The full text of the Enlarged Board
of Appeal’s decisions can be found by clicking G1/05 or G1/06 .
|
