In a recent decision J0022/13 the EPO has helped clarify when a divisional patent application can be validly filed.

J0022/13 is a recent decision issued by the EPO Legal Board of Appeal and relates to an earlier decision of the EPO Receiving Division which had not processed a divisional patent application because when it was filed the parent application was deemed to have been finally refused, withdrawn or deemed withdrawn.

Generally speaking a divisional application may be filed from any “pending earlier European patent application”. G1/09 clarified that a “pending earlier European patent application” is a patent application in which substantive rights deriving therefrom under the EPC are still in existence. Furthermore substantive rights of an applicant may continue to exist after refusal of an application until the decision to refuse becomes final.

It is generally accepted practice that filing an appeal against a decision to refuse a parent application can provide an opportunity to file a divisional patent application based upon it. However the EPC provides a two-step procedure if an applicant wants to have a decision to refuse an application reviewed by a Board of Appeal. A notice of appeal must be filed within two months of the notification of any decision and within four months a statement of grounds must be provided. If the notice of appeal is not filed by the end of the two month period the decision becomes final upon expiry of that period. If the notice of appeal is validly filed but filing of the grounds of appeal is not performed the decision only becomes final upon expiry of that four month period from notification of the decision being appealed. Filing a notice of appeal but no statement of grounds can be seen as a cost effective strategy to enable a divisional patent application to be validly filed.

In J0022/13 a notice of appeal was filed but no statement of grounds. The divisional patent application was filed after the four month due date for those statements of grounds. The EPO clarified that it is only after expiry of the due date for filing the statement of grounds, and if the statement of grounds is not filed, that no legal redress any longer exists and the parent application is thus deemed no longer pending.

Accordingly the divisional patent application which was filed after the four month period had expired but before the appeal was finally rejected in a decision could not be treated as a divisional patent application.

The decision can be found here http://www.epo.org/law-practice/case-law-appeals/pdf/j130022eu1.pdf

Practical advice – when just filing a notice of appeal on a refused parent application to enable a divisional application to be filed, the divisional application must be filed before the four month due date for filing the statement of grounds.