G 0001/06 (Sequences of divisionals/SEIKO) of 28.6.2007 - #91

Rank: 91
No. of citations: 57

G 1/06 and G 1/05 together looked at the conditions under which divisional applications fulfill the requirements of Art. 76(1), which states, i.a., that a divisional application "may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed".

Both decisions were published in the same issue of the Official Journal (5/2008) and they both share the same Summary of Facts and Submissions, and the same Reasons. Only the Orders address different points: G 1/06 looked at the case of sequences of divisional applications (grandparent, parent, child), whereas G 1/05 was concerned with the question of whether deficiencies under Art. 76(1) can be corrected after filing.

G 1/06 is ruled that, in order for a divisional application in a sequence of divisional applications to be valid, non of its predecessors must go beyond the content of its respective parent application. Only if this premise is fulfilled, the last applicaton is a valid divisional application. More precisely, the Board said:

„it is a necessary and sufficient condition for a divisional application ... 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“ (Order). 

The rationale behind the Order is that a valid divisional application can only be filed from a valid parent. Otherwise any breach of Art. 76(1) could be cured by filing a further divisonal which no longer contains the matter added over the parent in the previous generation.

Almost needless to say, regarding the application of Art. 123(2) to divisional applications, G 1/06 (and G 1/05) held that

„amendments to divisional applications are allowed under Article 123(2) EPC to the same extent as amendments of any other non-divisional applications ... a divisional application can be directed by amendment to aspects of the earlier application also disclosed in the divisional application as filed but not encompassed by the claims of the divisional application as filed“ (point 9.2 of the reasons).

The proper and safe way of filing sequences of divisionals after G 1/06 is therefore filing identical copies of the earliest application in each of the divisionals in the sequence of divisionals, or - if claim amendments are desired at the time of filing of the divisional application - by adding the claim wording of the earliest application (re-phrased in terms of "aspects"/"embodiments" instead of "claims") to the end of an otherwise identical description of the divisional application to be filed.

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Headword:

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.