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.

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.