Thursday, 17 September 2009

J 5/08 - Pending or Not Pending - That is the Question

The decision deals with an appeal filed against the decision of the Receiving Section that a divisional would not be treated as such because the parent application was not pending any more.

Here is a simplified (!) timeline summarizing the major events:

The Examining Division (ED) simultaneously issued (a) a decision pursuant to R 89 EPC 1973 and (b) an interlocutory revision decision pursuant to A 109(1) EPC 1973, both decisions relating to the decision to grant. [10]

The question is then, what was the effect of these actions with respect to the issue of whether the (parent) application remained pending within the meaning of R 25(1) EPC 1973 ? As regards the meaning of “pending application” in R 25(1) EPC 1973, one interpretation is given in the Information from the EPO (OJ EPO 2002, 112). There it is stated as follows: “An application is pending up to (but not including) the date that the European Patent Bulletin mentions the grant of the European patent, or until the date that the application is refused, withdrawn or deemed withdrawn; if notice of appeal is filed against the decision to refuse, a divisional application may still be filed while appeal proceedings are under way (see Guidelines A-IV, 1.1.4)” However, this official information contains only the statement that the cited procedural situations determine the end of the pendency of a EP application but the statement does not state specific criteria which can be used to define the pendency/nonpendency of an application in other procedural situations, for example as in the present case where an appeal was filed against the decision to grant. [11] […]

The Receiving Section stated that a decision to correct the decision to grant does not “re-open” the grant procedure and does not “re-open” the possibility to file a divisional application. However, in the present case this conclusion is only correct with regard to a decision to correct the grant decision pursuant to R 89, since such a decision does not involve a substantive amendment to the decision. It was not correct with regard to a revision decision under A 109, which has the effect that the appealed decision is set aside. [21] […]

As such, a revision decision pursuant to A 109 opens up the possibility that the patentability of the claimed subject matter will be completely re-assessed, independently of whether or not the cancellation of the appealed decision is expressly ordered or the written reasons are restricted to a specific legal question. Such a decision cannot be limited to a single legal question or issue as e.g. the question whether or not a decision to grant can be corrected. This is the decisive difference from a decision under R 89, which does not affect the date and legal existence of the decision to be corrected. [23]

In the present case, the revision decision under A 109 was restricted to the correction of the decision to grant. However, the lack of any exhaustive statement in respect of the patentability of the subject matter did not limit the appeal proceedings to the allowed correction, because the decision to grant was replaced by the revision decision on 12 June 2006 and the grant proceedings were not terminated before this date. The grant proceedings having been terminated by the revision decision on 12 June 2006 were still pending up to this date of the revision decision. [24]

As the present divisional application was filed […] before the revision decision was taken by the ED in the parent application, the parent application was pending at the filing date of the divisional application. [25]

This decision is well worth reading because it deals with an incredibly complicated situation resulting from an accumulation of errors.

The decision also deals with what can be considered as a decision under R 89 EPC 1973 (R 140 EPC 2000) [in point 5 of the Reasons] and contains interesting obiter dicta on the "controversial opinions on the effect of a timely filed but inadmissible appeal" [points 13 to 18 of the Reasons].

To read the whole decision, click here.