Like J 28/03, J 01/24 deals with the question whether a European patent application is still "pending" after filing an appeal against the decision to grant the respective patent even though the mention of the grant has already been published. With its decision J 01/24 dated April 16, 2024, the Legal Board of Appeal of the European Patent Office (EPO) departed from the principle stated in J 28/03 that the answer to the question whether the patent application was still “pending” depended on the outcome of the appeal. Instead, the decision J 01/24 assessed whether substantive rights (e.g., provisional protection) still derive from the patent application. This was the case as, according to the current common practice of the EPO, the appeal of the applicant against the grant of the patent was treated as validly filed, with the consequence that the mention of the grant was deleted. Decision J 01/24 thus provides applicants which have overlooked to file a European divisional application before the publication of the mention of the grant of the parent application with a workaround to cure said deficiency by filing an appeal against the decision to grant and subsequently filing the divisional application.
1. Summary of Facts and Submissions
Decision J 01/24 concerns the admissibility of filing a divisional European patent application after the publication of the mention of the grant of the earlier application.
The appeal is directed against the interlocutory decision of the Receiving Section dated 14 September 2023 that the later application will not be treated as a divisional application of the earlier application. The Receiving Section allowed a separate appeal against the decision under Article 106(2) EPC.
A decision to grant was issued for the earlier application on 18 February 2021, setting an original date of publication of the mention of the grant as 17 March 2021.
On April 16, 2021, the applicant filed a notice of appeal against the decision to grant the earlier application and paid the appeal fee.
By a brief communication dated May 6, 2021, the Examining Division that was responsible for the earlier application informed the applicant that the decision to grant maintained its effect and remained valid, but that the date of publication of the mention of the grant had been deleted.
On May 24, 2021, the request for grant of a divisional application based on the earlier application was filed.
On June 18, 2021, the applicant filed the grounds of appeal.
In response to a status enquiry, the Receiving Section issued a brief communication informing the applicant that the status of the later application depended on the outcome of the appeal filed in respect to the earlier application.
On April 7, 2022, the applicant withdrew its appeal against the decision to grant the earlier application.
On May 18, 2022, the Receiving Section issued a noting of loss of rights pursuant to Rule 112(1) EPC. The Receiving Section found the later application could not be processed as a divisional application. With reference to the decision of the Legal Board of Appeal in J 28/03, the Receiving Section noted that the appeal against the decision to grant in respect of the earlier application had been withdrawn. The decision to grant the parent patent had therefore been upheld. Accordingly, a divisional application could only have been validly filed until the day before the publication of the mention of the grant (March 16, 2021).
On June 2, 2022, the Examining Division issued a communication advising the applicant of the new publication date of the mention of the grant in respect of the earlier application, namely 15 June 2022. This communication noted that the original decision to grant dated 18 February 2021 maintained its effect and remained valid.
On July 15, 2022, the applicant requested a decision under Rule 112(2) EPC and made submissions in support of the proposition that the later application had been validly filed as a divisional application.
In its interlocutory decision dated September 14, 2023, the Receiving Section ruled that the later application will not be treated as a divisional application of the earlier application and allowed a separate appeal against said decision.
On November 14, 2023, the appellant filed a notice of appeal and paid the appeal fee.
a. The arguments of the appealed decision of the Receiving Section
The Receiving Section argued that the principles of decision J 28/03 were applicable to the present case. In J 28/03, the Legal Board of Appeal drew a distinction between appeals against refusals of a European patent application and appeals against decisions to grant a European patent. As regards the former, there was a “guarantee” that a divisional application can survive even where the appeal was refused for whatever reason (Reasons 15). The latter was different, as a patent had already been granted, with the consequence that every further action was completely dependent on the outcome of the appeal proceedings (Reasons 16).
Moreover, the suspensive effect of an appeal did not allow to ignore the existence of an already taken decision. It only interrupted the normally following further steps until the definite decision of the last instance has been taken (Reasons 18).
b. The appeal against the decision of the Receiving Section
In the statement of grounds of appeal filed on January 15, 2024, the appellant argued that the principles established in J 28/03 were not applicable to the present case, and they were not convergent with the later decision G 01/09. In the present case, the original date of the mention of the grant had been deleted, and the parent application remained therefore pending. The situation in J 28/03 was different, as there was no deletion of the mention of the grant for the parent application. Therefore, the principles of this decision should not be applied to the present case, rather the principles set out in G 01/09 were applicable.
By letter dated July 15, 2022, the appellant argued that other divisional applications were filed under the same circumstances as the present and were allowed by the EPO so that the appellant had legitimate expectations that in the present case the divisional application could also be validly filed.
The applicant requested that the decision under appeal be set aside and that the later application be processed as a European divisional application. In the event that this request was rejected, oral proceedings were requested.
