G 0001/05 - Divisional/ASTROPOWER - #59

Citation rank: 59
No. of citations: 83

G 1/05 and G 1/06 dealt (in consolidated proceedings) with questions related to divisional applications, and how these are to be treated under the EPC. Both decisions were published in the same issue of the OJ (5/2008) and differed only with respect to their Headnote.

G 1/05 was concerned with the question of whether divisional applications, which at the time of filing extended over the content of its parent application (Art. 76(1), second sentence) could be amended so as to overcome the deficiency. It had been the common and undisputed practice of the EPO at that time to allow such amendments of divisional applications.

However, the Technical Board of Appeals of the referring decision (T 39/03) had strong reservations against this established practice. They saw inconsistencies both with recent developments in the case law at that time, and with Rule 25 EPC1973 (now Rule 36), setting the time limit for filing divisional applications. Specifically, T 39/93 saw difficulties with a new trend in case law (notably with T 1158/01) which required that for establishing the validity of a second-generation divisional application, validity of the first-generation divisional application had to be established as well (T 1158/01 is now overturned by G 1/06). The Technical Board in T 39/03 also mentioned that under UK patent law, a provision similar to Art. 76(1) EPC was interpreted not to allow amendments after filing of a divisional application. (The UK law, however, had then been amended to explicitly allow such amendments, while Art. 76(1) of the EPC was not amended.)

The Enlarged Board in G 1/05 looked at the wording of the relevant provisions of the EPC, and also considered the Travaux préparatoires. They found nothing that would indicate that a divisional application cannot be amended to overcome deficiencies under Art. 76, as is allowed for any other European patent application as well. They compared the situation of amendments to overcome Art. 76 violations with amendments to overcome extension of subject matter under Art. 123(2). They concluded that not allowing an amendment to bring the divisional application into conformity with Article 76(1), second sentence, would create a difference in treatment between comparable situations.

The Enlarged Board concluded that all considerations point in favour of an interpretation of Art. 76(1) EPC permitting an applicant to amend a divisional application after the application has been filed so as to comply with Art. 76, second sentence, provided - of course - that the amendment complies with the other requirements of the EPC.

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Headnote:

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.

The full text of the decision can be found here.