Can a European divisional poison its parent?

Following the European Patent Office Board of Appeal decision T 680/08, and after reading an extrapolation of the reasoning from this decision that has been proposed elsewhere, I have been wondering about the possibility of whether the content of a divisional application could be cited against its own parent (or vice versa).  I have expanded on this in more detail here. Please follow the link and let me know what you think.

It's EP divisional crunch time

The IPKat should not need to be reminding his patent attorney readers about this, but tomorrow 1 October 2010 is the final day in many cases for filing divisional applications at the EPO (see the IPKat's previous post here for a good starting point), as a result of the EPO Administrative Council decision CA/D 2/09.

Even though applicants and attorneys have had over a year to prepare, there will inevitably be something of a last minute rush to make sure all those divisionals that might be needed are on file by midnight tomorrow.  Will the EPO's fax machines and online system manage to cope with the load?

The IPKat knows that many hard-working people both at the EPO and within patent attorney firms will be struggling at the moment to cope with the excessive load of applications, and would like to express his sympathy for all those adversely affected.  He would be interested to hear any stories of how things are going (or not, as the case may be).  If you have the time, please chip in using the weblog's comment facility (anonymously, if necessary).

As a final tip, according to the Notice of the President dated 12 July 2007 (Special Edition No. 3, OJ EPO 2007), applications can be filed at the EPO's offices in Munich, The Hague or Berlin, in particular at the following fax numbers:

Munich
+49 (0)89 2399-4465
The Hague
+31 (0)70 340-3016
Berlin
+49 (0)30 25901-840

Other things to do in Munich on 1 October here.

1 October 2010 Update: Thanks to a comment, the IPKat has been pointed to this notice from the EPO, which states:

"The European Patent Office (EPO) has been informed of an email containing a hoax announcement purporting to be from the EPO in which the public is given the impression that the Office's fax and online filing services will not be available from 30 September 2010 to 6 am on 4 October 2010, due to maintenance and updating of the Office's telecommunication facilities.

The European Patent Office informs all concerned that this notice is completely false and that all electronic filing facilities at the European Patent Office (online and fax) are fully available.

The Office reserves the right to take legal steps against the person(s) who disseminated this false information."

The IPKat, who has not had sight of this email, is intrigued. Can anyone shed any further light?

G 1/09: When is a patent application pending?

Once a patent application has been filed, and before it has been granted, refused or withdrawn, the application is considered to be "pending", i.e. awaiting some further action before a final decision is taken.  One thing that can only be done while a European application is pending is filing of a divisional application.  If the application has already been granted, or has been refused or withdrawn, or if the two year period under Rule 36 has passed, it is too late.  Or is it?

A strange situation arises in the case of an application that is refused at the end of oral proceedings at the EPO.  At that point, one would think, the application becomes no longer pending and, consequently, it is no longer possible to file a divisional.  However, if an appeal is then filed against the decision the application miraculously becomes pending again, because otherwise a final decision by an appeal board could not be taken.  

The question then is: is a European patent application that has been refused at oral proceedings still pending during the time allowed in which to file an appeal?  Does it even matter if an appeal is filed to make the application pending again? 

This was the situation for EP application 01102231.6, which was refused by the examining division in oral proceedings held on 23 November 2005.  On 14 December 2005, the applicant filed a divisional application, i.e. within the time allowed for filing an appeal against the decision. They did not, however, file an appeal in time.  

The EPO then took the view that, because the pending earlier application has been finally refused, the application could not be processed as a divisional.  The EPO issued a decision to this effect, which the applicant then did appeal against.  

In decision J 2/08, the board of appeal decided that they could not decide on the meaning of the word "pending", and instead decided to refer the following question to the Enlarged Board of Appeal:

"Is an application which has been refused by a decision of the Examining Division thereafter still pending within the meaning of Rule 25 EPC 1973 (Rule 36(2) EPC) until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed?"

At this point, the IPKat thought that there were good arguments either way, and could not decide himself which way the question should be answered.  It did seem, however, a bit odd that an application could be considered to have been pending only in retrospect, which would be the inevitable result of the EPO's apparent view in 2006.

After a mere 16 months of deliberation, the Enlarged Board have now issued their decision, which is available via the EP register for the divisional application 05027368.9, and presumably shortly to appear on the EPO decisions page.  To cut what is a long story short (there is much pontification in the decision, which the IPKat's readers can peruse and comment on at their leisure), the Enlarged Board concluded:

"[U]nder the EPC a patent application which has been refused by the Examining Division is thereafter still pending within the meaning of Rule 25 EPC 1973 until the expiry of the period for filing an appeal and, on the day after, is no longer pending if no appeal is filed.  The same conclusion applies to Rule 36(1) EPC 2000 both in its former and its current version."

Or, in other words, in answer to the actual question raised: yes.


We can all now breath a sigh of relief, and get back to all those divisional applications that have to be filed by Friday.  


The IPKat thanks Simon Roberts (BT) for the tip.

EPO: English version of notice concerning communications under amended Rule 161 EPC

The European Patent Office has issued today an English version of its notice of 29 June 2010 (previously available only in German) concerning communications under amended Rule 161 EPC (thank you, Birgit Clark and Simon Roberts, for the pointer!). The notice concerns the calculation of the time limit according to Rule 36 EPC, brought in on 1 April 2010 (noted on IPKat here, here, here, here, here, here and here). Under Rule 36, divisionals must be filed within two years from a non-unity objection or from the first communication from the Examining Division. The question is: what is a communication from the Examining Division, namely, is a communication under Rule 161 a communication in the sense of Rule 36? The short answer is no:

A communication under Rule 161 EPC (both in its amended form as well as in the version applicable until 31 March 2010), despite emanating from the examining division in compliance with Rule 10 EPC, is not a substantive communication within the meaning of amended Rule 36(1) EPC and therefore does not cause the time limit for the filing of voluntary or mandatory divisional applications to start.

Practitioners are advised to read the notice in full here.

New Draft EPO Guidelines

The EPO have just released a draft version of the Guidelines for Examination, to be implemented from 1 April 2010. This is when the Administrative Council decisions CA/D 2/09 and 3/09 come into force, making changes to the EPC that will change the way applicants have to deal with unity of invention and the final dates for filing divisional applications.

The IPKat has not yet had chance to read through all 594 pages of the Guidelines, but noticed in flicking through them the following new passages that may be of interest to his readers. This is an example of how the EPO sees the new rules on divisionals working in practice:

"1.1.1.4 Second- and subsequent-generation divisional applications

Voluntary division (Rule 36(1)(a))

For the filing of second-generation divisional applications (i.e. divisional applications based on an earlier application which is itself also a divisional), the event which starts the period for voluntary division is the first communication in respect of the earliest application for which a communication has been issued. This is determined as illustrated by the following example:

Example 1

- EP1 is the original European application,

- EP2 is a divisional application based on EP1 and

- EP3 is a divisional application based on EP2.

Where a first communication (see IV, 1.1.1.2) has already been issued for EP1 when EP3 is filed (this is the usual situation), the period for voluntary division of EP2 (by the filing of EP3) is calculated from the date of notification of this first communication in respect of EP1.

However, all that is required is that EP2 is still pending when EP3 is filed; EP1 does not need to be pending. This is because EP1 is the earliest application in respect of which a first communication has been issued (used to calculate the period for voluntary division), but it is not the earlier application which has been divided (this is EP2), and it is the earlier application (EP2) which must be pending according to
Rule 36(1).

If no first communication has been issued for either EP1 or EP2 when EP3 is filed, the divisional is filed in time according to Rule 36(1), provided that EP2 is still pending.

Voluntary division in branched families of divisional applications

In cases where there are two divisional applications each derived from the same earlier (parent) application, the periods for voluntary division of the two divisional applications are calculated independently:

Example 2

- EP1 is the original European application,

- EP2a is a divisional application based on EP1 and

- EP2b is a divisional application based on EP1.

In example 2, the period for voluntary division of EP2a is calculated with reference to the appropriate communication issued in respect of EP1 or EP2a (as indicated under example 1 above) but not EP2b.

Likewise, the period for voluntary division of EP2b is calculated with reference to the appropriate communication issued in respect of EP1 or EP2b but not EP2a. These cases are treated in the same way as example 1 above, but ignoring any divisional applications which are not in a direct line from the divisional being filed to the earliest application.

Mandatory division (Rule 36(1)(b))

In example 1, the period for mandatory division of EP2 (by filing EP3) is calculated from the first communication in examination raising a specific objection of lack of unity for the first time in respect of EP2 (EP2 being the immediate parent application - see IV, 1.1.1.3)."

The IPKat thanks the EPO for making the new rules so clear and easy to follow. He is now sure that there will be no problems at all come 1 October 2010.

Tufty wonders how the EPO will be forcing applicants to file those divisionals that the EPO considers to be mandatory. Aren't all divisional applications voluntary?

More long division here. More legal obfuscation here.

More confusion about EP divisionals

The IPKat doesn't understand why amendments to the law are often not fully thought through before they are brought in. Such is the case with the upcoming amendments to Rule 36 (among others) of the European Patent Convention. As from 1 April 2010, this will dictate strict, but uncertain, time limits on when divisional applications can be filed. More detail on the new rules can be found in the IPKat's previous posts here, here and here, and from the EPO's Administrative Council decision here.

The amended rules themselves are not very clear, as many patent attorneys will already know. The EPO have now issued a notice that attempts to explain how the new rules will work in practice, and clarify some of the wording used. Unfortunately, as might be expected, the notice is itself not very easy to follow. The IPKat has managed to get the following points from it, but there may be some others that his readers might be able to help with.

1. "Earlier" does not mean the same as "earliest", and is intended to refer to only the immediately preceding pending application, rather than the first parent application, meaning that the 24 month time limit starts either from the date of the earliest A94(3) communication (e.g. on the parent, although this need not be the case) or from the date of a first communication raising a unity objection under A82. These could, of course be the same, but the rule leaves open the possibility of a new date being set if a unity objection is raised later on.

2. The examining division's "first communication" is one under Article 94(3); communications before this, i.e. from other EPO divisions, do not start the 2 year period.

3. A communication under Rule 137(5) cannot start the clock ticking, as it is not an objection of lack of unity under Article 82.

4. The Rule 126(2) 10 day rule counts.

5. New Rule 36 applies only to divisional applications filed on or after 1 April 2010. If the time limit under the new Rule has expired by then, or is still running, a divisional can still be filed up until 1 October 2010. The IPKat guesses this means that the 2 year period has already effectively started for applications where a communication under A94(3) has been issued.

Some of these clarifications inevitably raise further questions, which the IPKat has vaguely in mind but will leave to his readers to puzzle over and comment on if they feel so inclined.

PS. After reading the comments below this post, the IPKat now thinks that the way to get the longest period for filing divisionals is the following:

1. File the parent application, making sure as far as possible that no objection under A82 will result. If the search report or written opinion identifies a lack of unity, make amendments to overcome it. This should work for both direct application and ex-PCT regional phase applications.
   
2. Within 24 months of the first communication under A94(3) issuing on the parent (or, if no report is issued, before the grant date), file a divisional application containing claims that will definitely result in an objection under A82 (two independent claims directed to roughly the same thing should do it).
3. File any remaining divisional application(s) within 24 months of the examination report issued on the first divisional.

This strategy should give the applicant well over 4 years from the initial filing date in which to file their final divisional application. If any readers can think of a better way of maximising the time available under the new rules, please leave a comment.

A tricky European patent question

A friend of the IPKat has been pondering a particularly tricky question relating to European patent law, which has so far eluded a straightforward answer, even from the EPO. Any trade mark practitioners can look away now.

The question relates to what happens when an international application is objected to by the EPO acting as the international search authority (ISA) on grounds of lack of unity. Before the International Search Report (ISR) is established, the applicant is 'invited', under PCT Article 17(3)(a), to pay additional search fees to cover other inventions that have not been searched, giving a very tight one month deadline for paying the fee(s), under Rule 40.1. According to Annex D of the PCT Applicant's Guide, the EPO charges 1700 Euros for every search, which means that doing this can get very expensive for some applications.

Until last year, it didn't really matter whether any additional search fees were paid during the international stage, because extra searches could always be paid in the European regional phase. Following the implementation of Rule 164(2) EPC, however, this is no longer possible. Instead, it is now only possible to pursue inventions not searched during the international phase by filing a divisional application. Filing divisional applications at the EPO can also be a very expensive business.

The question is then what happens when an applicant is no longer interested in the invention searched by the ISA but wants to pursue another invention in the European regional phase that was not searched, and for which no additional search fees were paid. Is the applicant required to file a request to enter the European regional phase, meeting all the requirements of Rule 159 EPC for the claims he doesn't want, and then file a divisional application for the claims he does want? Is it possible instead to file the request for the parent application, but not pay any fees, and file the divisional before the fees become due? Is it possible just to file the European request as a divisional application and not bother with the parent? Or is there some other clever solution that has not been considered?

The IPKat does not have a clear answer, so would very much like to hear from any of his readers who might have ideas or, more preferably, who have done something in this situation that actually works. All contributions, preferably only by means of the comments facility so that all can obtain the benefit (anonymous/pseudonymous, if necessary), would be gratefully received.

Another EBA referral on divisionals

Thanks to Laurent Teyssedre's blog, the IPKat has learned of a new referral being made to the EPO Enlarged Board of Appeal relating to when divisional applications can be filed. The question being asked goes like this:

"Is an application which has been refused by a decision of the Examining Division thereafter still pending within the meaning of Rule 25 EPC 1973 (Rule 36(1) EPC) until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed?"

The decision leading to the question, J 2/08, has not yet been uploaded to the EPO's decision database, but can be found here, courtesy of Laurent. The case relates to European application number 05027368.9.

What happened during prosecution should be fairly clear, given the above question. The IPKat, who thinks that the answer to the question is a clear 'no', merely wonders why the applicant didn't follow the apparently normal (yet, in the EPO's eyes, abusive) procedure of filing a divisional application (without, of course, paying the fees) on the day before oral proceedings were scheduled, just on the off chance that their application was refused. Failing that, they could have filed an appeal just for the purpose of keeping the application pending. Couldn't they?

A dodge for the divisionals?

The IPKat's European patent attorney friend Kevin Cordina has asked him to give an airing to an idea concerning a great dodge to get around the new European Patent Office (EPO) divisional rules. He writes:

"The recently announced amendments to EPC Rule 36 [see earlier IPKat post and comments here] are intended to restrict the filing of 'abusive' divisional applications by restricting the periods during which they may be filed. This raises the fairly obvious question of how do we drag out the permitted periods to their maximum extent. Of particular interest is what to do with chains of divisional applications.

Rule 36(1)(a) refers to the 'earliest application', so the time limit in that article would not appear to start running again for each divisional in a chain. That is, all divisional applications must be filed within two years of the first exam report on the first application.

However, Rule 36(1)(b) is directed to the specific case of a unity objection, and refers to an "earlier application" (not "earliest"). This raises the possibility of extending the period for filing divisional applications well beyond the two years provided by Rule 36(1)(a):

A first application (application 1) is filed describing discrete inventions A, B, C and D, but only claiming A. This application proceeds merrily through examination and, two years after the first exam report, a divisional application (Application 2) is filed under Rule 36(1)(a) and claims are included to inventions A & B (probably with B appearing first in order to ensure that it is searched).

The first examination report on Application 2 will raise an objection under Article 82. This is the first time an objection under Article 82 has been raised, and therefore I have two years under Rule 36(1)(b) to file a further divisional application (Application 3). We are now four years from the first examination report on application 1.

In application 3, I include claims to C & B. The first examination report will raise an objection under Article 82. Rule 36(1)(b) provides two years from an Article 82 objection on "the earlier application". A clear reading of these words is that they refer to Application 3 and so there may two years from this objection to file a further divisional application (application 4).

However, Rule 36(1)(b) goes on to say "provided it was raising that specific objection for the first time". Whether I can file Application 4 thus depends on the meaning of these words:
• "specific objection" may be referring to an objection under Article 82 against a specific pair of inventions. In that case the rule provides two years in which to file a further divisional because the objection against C & B was raised for the first time in Application 3.
• However, "specific objection" may mean 'any objection under Article 82' (specific being used to contrast with, say, a novelty objection). In that case the first objection was in relation to Application 2 and there is not now a further opportunity.

If the first meaning is right, then the period could be stretched indefinitely by cunning drafting of claims to provoke unity objections against new combinations of claims in each divisional. If the second meaning is right, the period for filing a chain of divisionals may be stretched to at least four years from the first examination report on the first application. Of course, this only all works if you can actually find sufficient inventions lacking unity to provoke the objection.

One suspects that the EPO would like the second meaning to be right, but there is room for ambiguity there which seems certain to be tested. Or have I simply been staring at this too long and missed the entirely obvious reason why none of this will work?"

The IPKat says, if you have any bright thoughts on this, please let us all know.

Roger the Dodger here

Roger Dodger here
Another great Dodge here

EPC - Lots of changes coming

The Administrative Council of the EPO had a busy meeting last week, and decided on several changes to the EPC Implementing Regulations, resulting in decisions CA/D 2/09 and CA/D 3/09, due to come into force on 1 April 2010.  As well as the expected changes to Rule 36 regarding divisional applications (noted by the IPKat here), other changes include a new version of Rule 161 that will make responding to a written opinion prepared by the EPO for an international application compulsory shortly after entering the European regional phase.  On the face of it, the new Rule 161 appears to apply only to where a demand under Article 31 PCT has been filed but (as one anonymous commenter has already indicated), this was probably not the intention.  The IPKat wonders whether those responsible for drafting the new rule have a proper grasp of either English grammar or Boolean logic.  It is bad enough to have to deal with major tinkering of the EPC of this kind, but making it worse by shoddy legal drafting is hardly helpful.

CA/D 3/09 also makes changes aimed at clamping down harder on applications lacking unity, by making the applicant limit their application to only one invention in response to a finding of the search examiner.  Additionally, responses to an extended European search report will be mandatory and, when filing amendments, basis from the specification as-filed will need to be indicated.  

As far as the IPKat can figure out, all this will effectively makes compulsory what is currently merely advisory, and will tend to force applicants into making decisions about what to do with their application earlier on in the process, as well as making European patent attorneys work a bit harder (and, as a consequence, making applicants spend more money earlier on in the process).  Whether the EPO will respond in kind by speeding up examination is another matter. 

EP Divisional Applications - the new 2 year rule

Laurent Teyssedre has beaten the IPKat to it again, in announcing the result of today's EPO Administrative Council vote approving the following new version of Rule 36 EPC:

(1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that:

(a) the divisional application is filed before the expiry of a time limit of twenty-four months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued, or

(b) the divisional application is filed before the expiry of a time limit of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82, provided it was raising that specific objection for the first time.

(2) A divisional application shall be filed in the language of the proceedings for the earlier application. If the latter was not in an official language of the European Patent Office, the divisional application may be filed in the language of the earlier application; a translation into the language of the proceedings for the earlier application shall then be filed within two months of the filing of the divisional application. The divisional application shall be filed with the European Patent Office in Munich, The Hague or Berlin.

It looks like the IPKat's earlier suspicions about the proposed amendments have been confirmed, and the EPO will be holding to their promise of preventing 'abusive' divisional applications from being filed in future. The IPKat is, however, not certain about how the new Rule will work in practice. Will applicants be prevented from filing a divisional to cover embodiments no longer covered as a result of a limiting amendment, if 2 years have passed since the first communication under Article 94(3)? Will it be necessary to provoke an objection under Article 82 by submitting multiple independent claims so that a divisional application can be filed? What would happen if an objection under Article 82 were to be deliberately provoked; will this set the clock running again? Will there be a rush of divisional applications filed within 6 months of the rule coming into force? We shall presumably find out all this, and more, in due course...

UPDATE (4 April): It's now official (also here). The changes will come into force on 1 April 2010.

EP Divisional Applications: some food for thought

This will be old news for some more well-connected readers, but the IPKat has only just seen a proposal, submitted by the President of the EPO for consideration by the Committee on Patent Law and decision by the EPO Administrative Council, relating to how alleged 'abusive' practices on filing divisional applications might be tackled. The full document can be accessed via Laurent Teyssedre's blog here. The key feature of the proposal involves the following amended version of Rule 36 EPC:

1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that:
(a) the divisional application is filed before the expiry of a time limit of 24 months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued, or
(b) the divisional application is filed before the expiry of a time limit of 24 months from a communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82 EPC.

Laurent thinks that this is likely to be replaced by a revised version, to be submitted for review shortly.  The IPKat suspects, however, that any amendments will be in the form, rather than the substance, of the above proposal, given the EPO's clear desire to crack down on divisional applications following the emphatic decision of G 1/05.  

Any thoughts on how this kind of amendment might affect applicants would be welcome.  

EP Divisionals - a reminder

Providing us with a further example of just how glacially the EPO moves, issue 5 of the Official EPO Journal has just been published, including the partially conjoined Enlarged Board of Appeal decision of G 1/05 & G 1/06. Every European patent attorney will already be familiar with this decision, as it first came out about a year ago, but it has taken this long for it to appear in proper official form, and in all three official languages of the EPO.

(Right: the EPO, pictured yesterday)

The effect of the decision was to bring back a certain degree of sanity to the EPO approach regarding divisional applications, after an apparently rogue Board of Appeal (in T 39/03) took the preliminary view that a divisional application containing subject matter not found in its parent application would be invalid on filing, and could not therefore be amended to correct this defect. This, of course, went against any sensible interpretation of Article 76 EPC taken until that time, causing much annoyance and confusion among patent attorneys, who had to then make doubly sure that any divisional applications they filed definitely had no added subject matter, just in case the decision was upheld by the Enlarged Board. The result was that many divisional applications were filed in the meantime that were identical to their parents, and the public was even less sure as to what the applicant actually wanted to obtain protection for.

Thankfully, and undoubtedly at least in part due to the contribution provided by the late Sir Nicholas Pumfrey, the Enlarged Board decided that the previous sensible approach was the correct one. The decision is well summarised by the headnotes:

"1. 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.

2. 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."

The IPKat also found the following comments, towards the end of the decision, particularly illuminating:

"13.5 On Article 76(1) and Rule 25 EPC [now Rule 36] as presently worded the Enlarged Board of Appeal sees no adequate basis for defining any additional requirements to be imposed on divisional applications beyond the requirements that all applications have to fulfil as well. It appears that what applicants consider a legitimate exploitation of the procedural possibilities afforded by the EPC, others consider an abuse in relation to the law as they think it ought to be rather than as it is. The Board finds it unsatisfactory that sequences of divisional applications each containing the same broad disclosures of the original patent application, by means of at least an unamended description, should be pending for up to twenty years. If administrative measures, such as giving priority to the examination of divisional applications and bundling and speedily deciding co-pending divisional applications so as to minimise the possibility for applicants to keep alive subject-matter on which the Examining Division had already given a negative opinion in one application by means of refiling the same subject-matter again and again, are not adequate, it would be for the legislator to consider where there are abuses and what the remedy could be."

Without wanting to make the EPO into Aunt Sally, the IPKat would like to gently point out that those who might like to curb the (sometimes perhaps over-enthusiastic) use by some applicants of all the legitimate options at their disposal under the EPC might like to review this decision again. If there really is any abuse of the existing system, the solution may need to be to change the law itself (difficult and long-winded as this may be, as evidenced by the long gestation period of EPC2000), and not to make life arbitrarily harder for all applicants.