J 18/09 - Not Yet Pending

Is an international application that designates EP pending in Europe before it actually enters the European phase? Is it possible to divide it at that stage? These are questions the Board had to answer in the present decision.

On July 22, 2008, the application under consideration (hereafter referred to as the “Divisional Application” and abbreviated as “DA”) was filed as a divisional application to an international application (hereafter referred to as “IA”), which designated inter alia EP and for which the EPO had allocated an EP number and had acted as ISA.

The 31-month period for IA, for entering the European phase expired on July 23, i.e. one day after the filing date of DA, without the steps as required under Article 22 PCT in conjunction with R 159(1) having been taken. Consequently, the EPO issued a notification that the European application corresponding to IA was deemed to be withdrawn.

As regards DA, the Receiving Section (RS) issued a communication noting a loss of rights pursuant to R 112(1) on 15 October 2008 informing the applicant that the application would not be dealt with as a divisional application because IA could not be recognised as a pending European patent application, since it had not validly entered into the European phase.

The applicant requested and obtained an appealable decision. In the reasons for this decision, the RS mainly argued as follows:

Under the provisions of A 76 EPC in conjunction with R 36(1) EPC, the applicant may file a divisional application in respect of any pending earlier European patent application. From this it is to be concluded that the earlier application must be a “European patent application” which is pending before the EPO. For processing an international application and for it to maintain effect under Article 11(3) PCT before the EPO, A 153(5) EPC stipulates that an international application shall be treated as a European patent application if amongst other things the conditions laid down in R 159 EPC have been fulfilled. R 159(1) EPC lays down the acts to be performed for the entering of an international application under A 153 EPC into the European phase within a time limit of 31 months from the date of filing or, if one has been claimed, from the date of priority. In the present case the necessary acts to enter into the European phase could have been performed at any time before the expiry of the 31-month time limit on 23 July 2008. As none of the acts laid down in Article 22(1) PCT and R 159(1) EPC for entry into the European phase had been taken in respect of IA when DA was filed, IA could not be regarded as a pending European patent application as required under R 36(1) EPC, which is a pre-condition for allowing a divisional application to be validly filed.

The applicant filed an appeal against this decision.

Here is the Board’s verdict:

Applicable provisions

[1] The Board agrees with the [applicant] and the RS that the provisions of EPC 2000 and its Implementing Regulations apply to DA and to IA. In this respect the Board refers to Article 7(1), first sentence and Article 8 of the Revision Act of 29 November 2000 (OJ EPO 2001, Special Edition No 4, 50), Article 1(5), first sentence of the Decision of the Administrative Council of 28 June 2001 and Article 2 of the Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the EPC 2000 (OJ EPO 2007, Special Edition No 1, 89).

The IA is also subject to the provisions of the PCT and its Regulations.

The different opinions with respect to R 36 EPC

[2] R 36(1) EPC as in force when the DA was filed reads as follows:

The applicant may file a divisional application relating to any pending earlier European patent application.

In the present case, the main question to be answered is how the term “any pending earlier European patent application” is to be understood. In the appealed decision a different conclusion was reached to that argued for by the [applicant].

[3] The [applicant] submitted that IA was at least pending between the international filing date and the last day when the time limit defined in R 159(1) EPC expired because, according to Article 11(3) PCT, an international patent application shall have the effect of a regular national application in each designated State as of the international filing date. As the time limit pursuant to R 159(1) EPC expired in the present case on 23 July 2008, the DA was validly filed on 22 July 2008.

[4] The reasons in the appealed decision are mainly based on the grounds that:

(a) the term “pending earlier European patent application” in R 36(1) EPC includes the requirement that the parent application must be pending before the EPO; and

(b) an international application which has not fulfilled the requirements of R 159(1) EPC for entering the regional phase is not pending before the EPO and therefore cannot be considered a pending earlier European patent application pursuant to R 36(1) EPC.

The meaning of the term “pending earlier European application” in R 36(1) EPC

[5] The Board notes that the term “pending” in R 36(1) EPC is defined neither in the higher-ranking A 76 EPC (concerning the filing of divisional applications) nor in any other provision of the EPC. The established case law also does not provide a definition for the term “pending earlier European patent application” as a general dogmatic concept but only by reference to decisions on specific procedural situations concerning whether or not a particular application was pending. In this regard the Board points out that this wording of R 36(1) EPC is identical to the wording of the former R 25(1) EPC 1973 and, therefore, the corresponding case law can be taken into account.

[6] The present Board agrees with the statement of the Legal Board of Appeal in decision J 18/04 that the term “pending earlier European patent application” in R 25 EPC 1973 did not establish a time limit having a point in time at which the pending status of an application begins and ends, but rather stipulates a substantive requirement (J 18/04 [7-8]). However, even though the term stipulates a substantive requirement and not a time limit, the requirement is still not thereby exhaustively defined and its meaning must be construed in the context of other relevant procedural provisions and in accordance with general accepted rules of interpretation and, if appropriate, in the light of the higher ranking provisions of the PCT. This is because in the case of conflict, the provisions of the PCT and its Regulations prevail over the provisions of the EPC (A 150(2), third sentence EPC).

The literal interpretation of the term “pending application” indicates a procedure that has been initiated before the competent authority and is not yet completed. Thus, as a minimum requirement, proceedings must have been initiated before the competent authority. It appears to be obvious and needs no further explanation that proceedings are not initiated when an application is filed with an incompetent authority.

The present Board shares the opinion of the RS that the term “pending earlier European patent application” under R 36(1) EPC includes the requirement that the application must be pending before the EPO acting as patent granting-authority according to the EPC. This can be deduced from the word “European” and the context of the EPC in which R 36 EPC is embedded.

A European patent application is directed towards the grant of a European Patent on the basis of the proceedings according to the Provisions of the EPC (cf. Art. 2(1) EPC). Thus, in principle, only applications pending before the EPO can be European patent applications.

The possibility of filing a European patent application not only with the EPO but also with other competent authorities as stipulated by A 75(1)(a) EPC does not change the legal fact that an application filed with one of those authorities is the subject of proceedings according to the EPC before the EPO.

[7] From the foregoing it can be concluded that an international application filed according to the provisions of the PCT is pending before the competent PCT authorities (RO, ISA, IPEA), one of which may be the EPO. However, the EPO does not act as European patent granting-authority during the international phase and at this stage international applications designating EP are not regular European patent applications in accordance with R 36(1) EPC (which refers to “earlier European patent application[s]”) and are, therefore, not pending before the EPO but rather before an International Authority according to the PCT.

This can also be deduced from Article 11(3) PCT which reads as follows:

“Subject to Article 64(4), any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) and accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.”

If an international application (designating EP) were ipso facto a regular European patent application the legal fiction stipulated for by Article 11(3) PCT would not be necessary. Hence, in accordance with Article 11(3) PCT an international application designating EP is not as such a European patent application but only has the effect of such by virtue of the legal fiction contained in Article 11(3) PCT.

Scope of the legal fiction in Article 11(3) PCT
in the context of other provisions of the PCT

[8] Therefore, it remains to be decided what legal consequences must be drawn from the stipulated legal fiction according to Article 11(3) PCT that an international application shall have the effect of a regular national application as of the international filing date.

It must be noted that the wording of Article 11(3) PCT does not refer to the pendency of a national application but only to the legal effect resulting from a national application, e.g., the substantive rights to a specific priority, filing date or designation. This is the reason why this provision needs to contain the reference to Article 64(4) PCT, this reference acting as a restriction on the equating, for prior art purposes, of the priority date claimed under the Paris Convention with the actual filing date of the application.

The [applicant] takes the view that the legal fiction of Article 11(3) PCT includes the procedural consequence that an international application is to be regarded as pending before the EPO as from the international filing date because Article 11(3) PCT contains no procedural restriction other than the reference to Article 64(4) PCT.

In the Board’s view, this interpretation is incorrect and would contradict other provisions of the PCT, in particular Article 23(1) PCT, which stipulates for a delay of national procedure, and is not in line with the common understanding of the procedure under the PCT, as it will be explained in the following paragraphs.

[9] The Board does not dispute that a Euro-PCT application remains the same application through both the international and European phases. However, the application is subjected to different procedures under the PCT and under the EPC. It is the very essence of the unitary filing system drawn up by the PCT that in the international phase the international application is subject to the procedural rules of the PCT and not to those of the national laws (possibly divergent from those of the PCT) which may become applicable once the international application has entered the national or regional phase before the competent national or regional office.

This is also brought out by A 150(2) EPC, where it is stated:

“International applications filed under the PCT may be the subject of proceedings before the EPO”.

The grant-proceedings before the EPO concerning a Euro-PCT application can only be initiated either by a request for abandoning the PCT-route under Article 23(2) PCT or by performing the procedural acts stipulated by Article 22 PCT.

In the present case no such request was filed nor was the required national fee (filing fee) according to Article 22(1) PCT in conjunction with R 159(1)(c) EPC paid by the [applicant]. In contrast, in case J 17/99 [3,5] referred to by the [applicant] a request for early entry into the regional phase before the EPO was filed and the necessary fees were paid […]. Thus, in that case proceedings before the EPO as European patent granting-authority were validly initiated by this request and, therefore, the legal situation was different to the present application and cannot be taken as a basis for deciding the present case.

[10] The present Board has scrutinised the travaux préparatoires concerning the EPC and the amendments to the different versions of R 25(1) EPC 1973 and R 36(1) EPC respectively since the EPC entered into force. It has, however, not found any indication that the EPO or the respective law maker ever considered an international application which had not entered the European phase to be an earlier application pursuant to R 36(1) EPC or R 25(1) EPC 1973 respectively.

Accordingly, the EPO Guidelines for Examination (A-IV, 1.1.1.1, version in force before April 2010) simply informed the public that:

“A European patent application may be divided when it is pending. In order to divide a European application, the applicant files one or more European divisional applications. It is irrelevant what kind of application the European patent application which is divided, i.e. the parent application, is. The parent application could thus itself be an earlier divisional application. In the case of the parent application being a Euro-PCT application, a divisional application can only be filed once the Euro-PCT application is pending before the EPO acting as a designated or elected Office, i.e. the Euro-PCT application must have entered the European phase.” (Underlining by the Board).

From this it appears that the EPO has always considered an international patent application that has not yet entered the European phase not to be a pending European patent application in the sense of R 36(1) EPC.

[11] It is also the case that the Contracting States of the PCT discussed over many years the introduction of provisions into the PCT which would allow the filing of a divisional application during the international phase of an international patent application (see, e.g., WIPO, Patent Cooperation Treaty (PCT), Working Group on Reform of the Patent Cooperation Treaty, fifth Session, Geneva, November 17 to 21, 2003, Meeting Code PCT/R/WG/5/6, here).

These discussions concerned the division of an international application into two different international applications under the PCT during the international phase. It is to be noted that this procedural situation is to be distinguished from the question whether or not the filing of a divisional application under the national patent law is possible when the parent application is still in the international phase.

However, it is to be pointed out that the working group justified the proposed amendment to the PCT in point 11 of this document on the basis that:

“Obviously, the introduction of a procedure allowing the applicant to file an international application as a divisional application of an initial international application (“divisional application”) would greatly simplify, from the applicant’s perspective, the processing of the international application where the International Searching Authority or the International Preliminary Examining Authority makes a finding of lack of unity of invention, replacing the need to individually file, after national phase entry, divisional (national) applications with each designated or elected Office concerned.” (Underlining by the Board).

Apparently, the possibility of filing a national (regional) divisional application during the international phase of an international application was never considered. The same line of reasoning is repeated in point 33 of this document:

“While that result could be achieved by proceeding into the national phase with the internally divided initial international application, to be followed by its division separately during the procedure before each national Office, it would be simpler to enable the initial international application to proceed into the national phase, from the outset, as separate divisional applications.” (Underlining by the Board).

Both cited passages indicate that the working group took the view that as a matter of law a national (regional) divisional application relating to an initial international application can only be filed when the international application is the subject of proceedings before the national (regional) Office. This view includes the perception that an international application is not pending before the national (regional) Office before its entry into the national (regional) phase and that the pendency before the national Office is an important requirement for filing a national divisional application.

[12] The EPO’s view, namely that as a matter of law an international application which has not entered the European phase is not pending before the EPO, was originally supported by the wording of A 150(3) EPC 1973, which stated that:

“An international application, for which the EPO acts as designated Office or elected Office, shall be deemed to be a European patent application.”

It is self-explanatory that the EPO could only act as designated or elected Office after an international application had entered the European phase. However, the wording of A 150(3) EPC 1973 was amended by the new A 153(2) EPC implemented by the Revision 2000 of the EPC, and now reads as follows:

“An international application for which the EPO is a designated or elected Office, and which has been accorded an international date of filing, shall be equivalent to a regular European application (Euro-PCT application).”

The latter wording appears to correspond better to the wording in Article 11(3) PCT but, as with that provision, does not contain any reference to the pendency of a Euro-PCT application as a European patent application. The new wording only reflects the intention of the PCT that an international patent application shall be treated as equal to a national or regional application unless specific provisions of the PCT require or allow a different treatment. The PCT’s legislative intent of equal treatment can furthermore be deduced for example from Article 48(2)(a) PCT, which stipulates that:

“Any Contracting State shall, as far as that State is concerned, excuse, for reasons admitted under its national law, any delay in meeting any time limit.”

However, this very same article also reflects the existence of a potentially different procedural treatment of an international application in its international phase as compared with a national application, because the benefit of a national provision excusing “any delay in meeting any time limit” cannot be claimed during the international phase but only after the international application has entered the national (regional) phase.

Therefore, Article 48(2) PCT stipulates a procedural restriction not mentioned in Article 11(3) PCT. The [applicant’s] contention that the legal fiction in Article 11(3) excludes the application of procedural restrictions according to other PCT provisions is, therefore, incorrect.

[13] The wording in Article 11(3) PCT “...shall have effect of a regular national application in each designated State as of the international filing date...” is a legal fiction which does not lead to the result that the proceedings under the PCT become national ones. On the contrary, the proceedings in the international phase under the PCT are special ones and are governed by the provisions of the PCT. Proceedings under national law are expressly excluded during the international phase of an international application. This can be deduced from Article 23(1) PCT (the article being headed “Delaying of National Procedure”), wherein it is stated that:

“No designated Office shall process or examine the international application prior to the expiration of the applicable time limit under Article 22.”

Apparently, Article 23(1) PCT restricts the procedural effect of an international application in the international phase, as regards the applicability of national law, and thereby also limits the legal effect of the international application stipulated for by Article 11(3) PCT if this provision were to be interpreted in the way claimed by the [applicant].

Insofar as paragraph 2 of Article 23 PCT allows any designated Office to process or examine an international application at any time, it must be noted that the required express request of the applicant to proceed in this way has the effect that the international phase, and thus the proceedings under the PCT, are terminated.

As already stated under point [9] above, in the present case such an express request under Article 23(2) PCT had not been filed and cannot be regarded as implicit from the mere filing of the DA, as the [applicant] argued during the oral proceedings. Such an interpretation does not comply with the requirement of an express request according to Article 23(2) PCT and for the EPO it would not have been clear that the [applicant] intended the application to enter the regional phase. Thus, in the present case, the filing of the divisional application cannot be construed as a request under Article 23(2) PCT to process or examine the international application. As in the present case this requirement of an express request was not met it does not have to be decided what further acts under R 159 EPC have to be performed to initiate an earlier entry in the regional phase (cf. with respect to possible different views: Singer/Stauder (Hesper), EPC, 5th ed., A 153 notes 78 to 80).

The wording of A 150(2) EPC also reflects the separate nature of international and regional proceedings, where it is stated:

“International applications filed under the PCT may be the subject of proceedings before the EPO”.

In the Board’s view the distinction between pending proceedings during the international phase and those during the regional phase of an international patent application is therefore justified by the EPC as well as the PCT. As regards an international patent application designating EP, proceedings before the PCT authorities are initiated as from the filing date and proceedings before the EPO only as from the day on which the requirements for entering the regional phase prescribed by Article 22(1) PCT have been fulfilled.

[14] The reasoning of the RS that the term “pending earlier European patent application” refers to proceedings pending before the EPO as the competent authority to decide on the earlier application under the EPC is, therefore, absolutely correct. The procedural term “pendency” in the sense of R 36 EPC implies that the EPO has become competent to decide on the request for grant.

[15] A further restriction for filing a divisional application relating to an international application under R 36 EPC derives from Article 23(1) PCT. As already explained in point [13] above, according to Article 23(1) PCT the EPO has no competence during the international phase of an international application to proceed and examine an application under the provisions of the EPC with respect to the patentability of the subject matter claimed by the international application or with respect to procedural requirements. The EPO only becomes competent as European patent granting-authority when the requirements for the entry into the European phase according to Article 22(1) PCT are fulfilled or an express request for entry into the European phase pursuant to Article 22(2) PCT has terminated the international phase of an international application. It must be noted that the time limit of 30 months according to Article 22(1) PCT is extended to 31 months by virtue of R 159(1) EPC. The prohibition on proceeding and examining the Euro-PCT application during the international phase has a direct procedural effect as regards the required examination of the related divisional application filed with the EPO, as explained in the following paragraph.

[16] The filing of a divisional application under R 36(1) EPC requires that the RS of the EPO examines, immediately after the filing, whether or not a filing date can be accorded to the divisional application. This examination includes a decision on the procedural status of the earlier European application. If the earlier application is an international one which is still in the international phase, the RS cannot take such a (implicit) decision on the international application because Article 23(1) PCT forbids a designated Office from examining the international application during this phase. Therefore, it appears from the PCT that R 36(1) EPC must be construed in the sense that the term “pending earlier European patent application” refers to an application pending before the EPO as competent EPC authority. This interpretation follows from the term “European” and is consistent with the legal fiction in Article 11(3) PCT being restricted by Article 23(1) PCT.

Summing up the above arguments and conclusions, the present Board confirms the statement of the Receiving Section that, on the basis of the provisions of the PCT and EPC, a Euro-PCT-application not having entered the European phase is not a pending earlier European application in the sense of R 36(1) PCT.

Discussion of [applicant’s] further arguments

[17] The [applicant’s] conclusion that the EPO’s communication, which allocated a European application number to its IA designating EP, makes it clear that the earlier application was a pending European application is incorrect because the allocation of such an application number is simply an administrative act to make it easier for the EPO to handle any incoming documents. Such a purely administrative act cannot be taken as a basis for interpretation of the term “pending earlier European patent application” in R 36(1) EPC.

[18] Furthermore, it is true that the EPO issued a communication in relation to the earlier application indicating:

“The European patent application cited above is deemed to be withdrawn”.

However, even if the use of the term “European patent application” in that statement corresponds to the wording in R 160(1) EPC, the statement that the European patent application was deemed to be withdrawn was not a constitutive procedural act but only a declaratory one with respect to the non-pendency of the proceedings before the EPO. Such a statement did not initiate grant proceedings before the EPO as is required by R 36(1) EPC for IA but made it clear that IA was not being proceeded with under the EPC and only informed the applicant that IA had not become pending before the EPO to be further prosecuted as a European patent application.

[19] Furthermore, the Board points out that the PCT does not provide a right to file a divisional application or to proceed with unsearched matter during the regional phase.

In addition, the [applicant’s] reference to American and British patent law and procedure is not an appropriate basis for interpreting R 36(1) EPC.

The [applicant’s] submissions concerning cost effectiveness and equal treatment relate to IA as such and are arguments which at best could be used to question the restriction of IA to subject matter which was dealt with in the international search report.

Consequently, if the requirements according to R 36 EPC are not fulfilled, a right to file a divisional application cannot be based on arguments of cost effectiveness and non-discrimination or be justified by reference to the procedural possibilities which are provided by national foreign law.

Referral to the Enlarged Board of Appeal (EBA)

[20] As regards the [applicant’s] request for referral of a point of law of fundamental importance, the Board has explained in the above paragraphs how the answer to this question can be deduced directly and unequivocally from the provisions of the EPC and PCT. The necessity to interpret R 36(1) EPC in the light of the provisions of the PCT does not limit the Board’s competence to decide itself on this question and does not mean that this question requires a decision of the EBA. Therefore, the situation in the present case does not correspond to the situation which led to the reference of a legal question to the Enlarged Board of Appeal in case G 1/09. Furthermore, the Board does not know of any decisions which run contrary to the present Board’s conclusions and which would necessitate a ruling by the Enlarged Board of Appeal with a view to ensuring uniform application of the law (A 112(1) EPC).

[21] In summary, neither the request for treating the DA as a validly filed divisional application nor the request for referral of a point of law to the EBA is allowable.

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