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Wednesday, July 04, 2007

EPO Enlarged Board Of Appeal on Divisional Applications.

Apparently the

IPKat Blog has got some clue pointing out that the Enlarged Board of Appeal has taken a final decision in the

Case G0001/05 concerning allowable subject-matter in divisional applications. The text of the decision has not been published on the EPO website so far but you are free the conduct an on-line file inspection into the

EPO Official file wrapper of the application 99100131.4 where a copy can be downloaded.

The following questions had been referred to the Enlarged Board of Appeal by

T 0039/03:

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?
If the answer to question (1) is yes, is this still possible when the earlier application is no longer pending?
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? 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 short, the first question has been answered in the affirmative. That means that making a mistake at filing time of a divisional application by adding additional subject-matter beyond the content of the earlier application does not necessarily kill the divisional application once and for all.

In order to avoid any procedural traps, the Enlarged Board of Appeal encourages applicants to file divisional applications with the same description and claims as the root application, however, with the claims in a different order so that the claims first in order were directed to the subject-matter of specific interest in the divisional application, and then at a later stage filing amendments to bring the application into the form they particularly desired.

Furthermore, the Enlarged Board of Appeal stated that an amendment to remove added matter not disclosed in the parent application as filed from the divisional application as filed is allowable irrespective of whether the earlier application is still pending or not.

In a chain of consecutive divisional applications, content which has been omitted on filing a member higher up the sequence cannot be re-introduced into that member or in divisional applications lower down the sequence from it.

The decision surely will be greeted by patent attorneys; see e.g. the

Amicus Curiae Brief in re G01/05 (Divisional Application) (see on page 58) on behalf of

epi.

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