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Divisional patent applications can be filed until expiry of appeal period for the parent application

November 2010 - Intellectual Property. Legal Developments by Norrbom Vinding Law Firm, member of ius laboris.

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The final body of appeal of the European Patent Office recently established that divisional patent applications may be filed during the appeal period for the parent application even if the applicant eventually decides not to appeal the refusal of the parent application.

For companies seeking to patent an invention, it will often be an advantage to split the application into several divisional applications. But applicants should note that such divisional applications can only be filed while the parent application is still pending at the EPO. But what does that mean? That was the question in this case.  

An electronics manufacturer filed a divisional patent application following the EPO's decision to refuse the parent application. The company did not appeal the refusal, but instead filed the divisional application before the end of the appeal period. Even so, the EPO refused to examine the divisional application. Not happy with that decision, the company appealed it to the Enlarged Board of Appeal, which is the EPO's final body of appeal.  

Appeal period is crucial
In its decision, the Enlarged Board of Appeal said that the EPO rules means that a parent application is pending until the expiry of the period in which a decision to refuse an application can be appealed. As a consequence, divisional applications may be filed during the appeal period even if the applicant ends up not appealing the refusal of the parent application.

Norrbom Vinding notes:

  • that applicants used to have to choose between two evils: to file a divisional application before the EPO had decided whether to grant or refuse the parent application "just to be on the safe side" or to wait and see if the application was refused and then appeal the refusal just to keep a subsequent divisional application alive; and
  • that the decision is a contribution to the efforts to streamline EPO application procedures. It is very much in harmony with the new EPO rules which took effect on 1 October 2010 and are intended to ease administrative procedures and shorten the examination process at EPO.