All options open for European Divisional Applications

In the Spring 2006 edition of Patent Issues we reported that the EPO’s Enlarged Board of Appeal had been called upon to decide certain important points of law relating to divisional applications. After deliberating for nearly two years, the Enlarged Board has finally reached its decision. We are pleased to report that the widely-feared clampdown on the filing of divisionals has failed to materialise, and that the Enlarged Board has instead decided that the status quo should be maintained.

The European Patent Convention (EPC) allows the filing of “a divisional application relating to any pending earlier European patent application” (Rule 25(1) EPC), subject to the proviso that the divisional “may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed” (Article 76(1) EPC).

For many years it had been assumed – by applicants, patent attorneys and the EPO alike – that these provisions permitted a divisional application to be amended to delete any new subject-matter that was not present in the parent application. It had also been assumed that these provisions entitled applicants to file “cascading” divisionals (that is, to divide divisional applications) directed to any subject-matter that was disclosed in the parent applications, without regard to whether the subject-matter claimed in the divisional was also claimed in the parent applications.

These long-held assumptions were challenged by certain decisions of the Technical Boards of Appeal, leading to fears that applicants’ freedom to file divisionals would be curtailed. To resolve the legal uncertainty caused by these Technical Boards’ decisions, the Enlarged Board was called upon to decide whether these aspects of the established practice for filing divisionals were permissable under the EPC. The Enlarged Board handed down its judgement in decisions G 1/05 and G 1/06.

Fig.1, Polycrystalline solar cell, taken from European Patent Application No. 99100131, which was the subject of Enlarged Board of Appeal decision G1/05.

 

Decision G 1/05 – Amendment of Divisionals with Added Subject-Matter

In the referring decision, which concerned amendment of a patent application relating to a polycrystalline solar cell, the Examining Division had refused a divisional application on the grounds that it did not comply with Article 76(1) EPC, since a particular feature set out in the independent claims of the divisional was not disclosed in the parent application. The Examining Division took the view that the divisional application was fatally flawed at its date of filing, and that it could not be amended to delete the new subject-matter in order to satisfy Article 76(1) EPC.

The Examining Division’s interpretation of the law, if correct, could cause severe hardship to applicants in cases where the parent application was no longer pending (for example, where the parent had already been granted). Since Rule 25(1) EPC permits divisionals to be filed only whilst the parent is still pending, the Examining Division’s interpretation would have prevented applicants from having any remedy when new subject-matter had been inadvertently introduced at the time of filing the divisional. Applicants could be denied protection for valuable subject-matter due to a simple error or oversight when preparing the divisional.

The Enlarged Board decided that a divisional application can be amended to remove offending added subject-matter. The Board found no evidence in the EPC itself or in the Travaux Préparatoires to support a different conclusion.

Furthermore, the Enlarged Board held that the status of the parent application is irrelevant. Referring to their earlier decision G 4/98, they held that a divisional application is procedurally independent from its parent, such that actions or omissions in the procedure concerning the parent should not influence the procedure concerning the divisional. Hence, a divisional can be amended to remove added-subject matter, even at a time when the parent is no longer pending.

The Enlarged Board held that the same limitations apply to amendments to divisional applications as to any other (non-divisional) applications. In particular, the divisional application may not be amended in such a way that it contains subject-matter that is not directly and unambiguously derivable from the divisional application as filed. Thus, the claims of a divisional may be directed to subject-matter that was disclosed, but not claimed, in the divisional application as filed.

 

Decision G 1/06 – Cascading Divisionals

The referring decision in G 1/06, which related to a patent application for a liquid crystal device, concerned the fate of a third generation divisional application in a sequence of cascading divisionals. As illustrated in Fig. 2, the root (originating) application and the first generation divisional had both been granted.

A second generation divisionalhad been filed. Claim 1 omitted certain features that were present in claim 1 of the first generation divisional (and its corresponding statement of invention). The second generation divisional was consequently refused by the Examining Division for non-compliance with Article 76(1) EPC on the grounds that new subject-matter was added by the omission of features that the Examining Division alleged to be essential to the invention disclosed in its parent application. The decision to refuse the second generation divisional was not appealed.

A third generation divisional had also been filed. Claim 1 was identical to that of the second generation divisional. The third generation divisional was refused on the grounds that the refusal of the second generation divisional necessarily entailed that the third generation division also failed to comply with Article 76(1) EPC. The applicant appealed the refusal of the third generation divisional.

The Technical Board of Appeal took the view that the subject-matter of claim 1 was directly and unambiguously derivable from the drawings and description of each of the three parent applications. However (citing decisions T 904/97 and T 1158/01), they were open to the possibility that it might nevertheless contravene Article 76(1) EPC since it did not have an “impeccable pedigree” owing to the earlier decision that its parent did not comply with Article 76(1) EPC. The Technical Board also noted that decisions T 720/02 and 797/02 had decided that the subject-matter of any second (and subsequent) generation divisional must fall within the scope of the claims of the preceding divisional application(s). To put this another way, in these earlier decisions it was held that a second (or subsequent) generation divisional must not include subject-matter that extends beyond that claimed in its parent, contrary to the widely-accepted belief that a divisional can be filed in respect of any subject-matter matter disclosed in the description, claims and drawings of its parent. This surprising view was justified on the grounds that the public would otherwise be uncertain during most of the life of a patent as to how much of its subject-matter might still be claimed in subsequent divisional applications.

The Enlarged Board held that, in a sequence of cascading divisional applications, the requirements of Article 76(1) EPC are fully satisfied if everything disclosed in a particular divisional can be directly and unambiguously derived from the disclosure of each of the preceding applications. The EPC provides no basis for the proposition that the subject-matter of the divisional must fall within the scope of the claims of each preceding application.

The Enlarged Board also noted that a second (or subsequent) generation divisional application could not be refused on the grounds that any of the preceding applications did not comply with Article 76(1) EPC. The fate of the preceding applications is irrelevant. As already noted in G 1/05, a divisional application is procedurally independent from its parent application.

In obiter comment, the Enlarged Board noted that it is unsatisfactory that sequences of divisionals with the same description should remain pending for up to 20 years, but said if administrative measures are not adequate to minimize the possibility for applicants to keep alive subject matter on which the Examining Division has already given a negative opinion, then it is for the legislature to consider where there are abuses and what the remedy should be.

 

Comment

We welcome the Enlarged Board’s decision to maintain the status quo, which comes after a long period of legal uncertainty.

We recommend that applicants continue to ensure that each divisional contains the entire content (including the claims) of its parent. This strategy will allow the maximum flexibility for amending divisionals, and for the possible filing of cascading divisionals, without fear of contravening Article 76(1) EPC.

The process of filing divisional applications was never intended to be used in the same way as the US “continuation” process, and there is a significant body of opinion in the EPO that a rule change may be necessary. We disagree. We believe strong internal administrative measures (such as giving priority to examination of divisionals) will all but eliminate the issue. Rule 25 was amended in 2001 to permit a divisional application to be filed at any time up to grant of a patent, and the change was widely welcomed at the time. It should not be reversed.

 

Summary of Tactics for Divisional Applications

If an EPO examiner issues a communication offering to grant certain claims but not others, it may be tempting to take what’s on offer and file a divisional to try to get more. This is a common practice in the US, but it is expensive, not least because all back renewal fees must be paid on the divisional, as if it had been filed on the original filing date of the parent. It is also fraught with risk, because double patenting is prohibited by Guideline C-IV 6.4, which is a complex subject for a separate discussion.

Instead, we find it is frequently worthwhile calling the Examiner at this stage and asking for:
– deletion of inessential limitations;
– addition of an independent claim in another category (product, apparatus, method, use);
– addition of an independent claim in the same category where permissible.

On filing a divisional application it is wise to keep the entire content of the parent in the divisional, in case you may want to divide again. The original claims can be added as “alternative embodiments” at the end of the specification. (Do not use the term “claims” as they would incur excess claims fees!) These can be deleted before grant to reduce translation costs, but leave this until the last opportunity.

You cannot amend the claims before the search report is drawn up, but it is safe now (following decision G 1/05) to file with the claims you really want. It doesn’t matter if the subject matter was not claimed in the parent, and it doesn’t matter if the subject matter falls outside the claims of the parent. Subsequent divisionals will not be fatally flawed.