EPO Enlarged Board of Appeal decides: refused application is still pending (for a while)
The Enlarged Board of Appeal (EBA) of the European Patent Office has handed down its decision in case G1/09, concerning the point in time at which a European patent application that is refused ceases to be "pending".
The referral to the EBA arose in a case concerned with a European patent application which was refused by the Examining Division during Oral Proceedings. An appeal against such a decision can be filed within two months. For the duration of the appeal proceedings, an appeal suspends the decision to refuse the application. In this case, the applicant did not file an appeal, but it did file a divisional application. One of the criteria for the valid filing of a divisional application is that the preceding (“parent”) application is still pending at the time that the divisional application is filed. The EPO maintained that this was not the case, as the parent application had been finally refused at the close of Oral Proceedings and was not pending at the time of filing the divisional application. They issued a decision stating that the divisional application had not been validly filed. The applicant did appeal against that decision.
Had the applicant filed an appeal against the original decision to refuse the parent application, the suspensive nature of the appeal would have meant that the parent application was considered pending again, and a divisional application could have been validly filed. The suspensive effect of an appeal is retroactive, meaning that it would not have mattered whether the appeal was filed before or after the divisional application; the divisional application would have been valid in either case. This creates an odd situation in which an application can be considered to have been pending in retrospect, effectively validating an act that was carried out when it was not considered pending (ie filing a divisional application).
The Board of Appeal, deciding this was a point of law of fundamental importance, referred the following question to the EBA.
"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?"
The EBA considered that grant proceedings are considered pending until either a) the date that the European Patent Bulletin mentions the grant of the patent, or b) the date that an application is finally refused or deemed withdrawn. So long as the possibility of filing an appeal remains, there is still the possibility of the application becoming ‘live’ again, and therefore a decision to refuse the application cannot be considered final until this possibility is removed.
Hence, the EBA reached the conclusion that an application is pending as long as the applicant has the possibility of filing an appeal, regardless of whether or not an appeal is ultimately filed. Thus, an application may be refused, yet still be regarded as "pending" for the purposes of filing a divisional application.
On 1 April 2010, the rules regarding the filing of divisional applications were changed. While the parent and divisional application must still be co-pending, divisional applications may now only be filed within a two year period starting from either the first communication from the Examining Division or from a communication from the Examining Division in which an objection of lack of unity of invention is raised for the first time. In most cases, that two year period will have passed before a decision is made to grant or refuse an application, and so the EBA's decision may therefore have less relevance to practice than would otherwise have been the case.
25 November 2010