J 24/10 – The Day Before

Can a divisional application be validly filed just a few hours before the mention of the grant of its parent application is published? That is the question with which the Legal Board of appeal had to deal here.

The Receiving Section had decided that the application would not be treated as a divisional application although the applicant had filed it at 11:49, that is to say before the publication of the mention of the grant of its parent application, at 14:00 of the same day.

[2] The main issue in the present case is whether or not the parent application was still pending within the meaning of R 36 on the date on which the divisional application was filed. More precisely, did the publication of the mention of the grant of the patent in the European Patent Bulletin on dd.mm.yy exclude the pendency of the parent application for this entire day or only as from 14:00, when the European Patent Bulletin ../.. became publicly available via the internet?

[3] The Board finds that this question has already been answered by decision G 1/09 of the Enlarged Board of Appeal (EBA) dated 27 September 2010.

According to its obiter dictum under point [4.3.2] of the Reasons, the EBA held that in the procedural situation when a patent is granted

“the pending status of the European patent application normally ceases on the day before the mention of its grant is published since from that point in time substantive rights under the EPC are no longer derived from the patent application, but now derive from the granted patent”.

Although this statement was given as an obiter dictum the procedural situation underlying the present case was fully considered by the EBA and the Board has not the slightest doubt as to the correctness of this statement and the applicability of this line of reasoning to the present case. Consequently, it must be stated that the pendency of the parent application ended with the day before the mention of the grant of the European patent in the European Patent Bulletin.

[4] It must be added that the above statement of the EBA relates only to the wording of R 25(1) EPC 1973 but it is clear from the further deliberations in the reasons for this decision that the same interpretation also applies to the wording of R 36(1) applicable to the present case.

[5] As a further reason why the applicant cannot file a divisional application on the date on which the mention of the grant of a patent for the parent application is published in the European Patent Bulletin, it was already pointed out in the reasons of decision J 7/04 of the Legal Board that:

“With the mention of the grant of the earlier patent, the applicant and the EPO no longer exercise any influence over the patent, which becomes autonomous and has to be treated as though it had been conferred by a national authority in accordance with A 64(1). On the date of the publication of the mention of the grant of the earlier application the patent is deemed to be outside the EPO’s jurisdiction, and a divisional application could not be filed on the same date because the application is definitively removed from the EPO’s sphere.”

The other decisions cited by the [applicant] do not deal with the procedural situation after grant of the European patent and its publication and are, therefore, not appropriate to answer the question as to the pendency of an application in the present case.

[6] The cited decisions J 7/04 and G 1/09 are based on the wording of former A 97(4) EPC 1973 (now A 97(3)). According to this wording the smallest time unit is the date (German version: der Tag; French version: la date) as such and not an hour or the chronological order of events on a specific date.

Furthermore, A 64(1) stipulates that the date of the publication and not the event of publication as such is the precondition for conferring the protection provided for by that Article.

Apparently, the lawmaker’s intention was to implement an incontestable and foreseeable point in time at which jurisdiction passes to the national instances and at which the patent confers on its proprietor the rights defined in A 64(1) in relation to third parties. In order to provide legal certainty for the applicant, the decision to grant a patent regularly contains the scheduled date of the mention of the grant of the European patent so that the applicant is informed beforehand of this date.

[7] Summing up the foregoing considerations, the Board comes to the conclusion that in the present case the parent application was no longer pending before the EPO on dd.mm.yy, the date on which the publication of the mention of the grant of the patent took place. Therefore, the requirement of a pending (parent) application pursuant to R 36 was not fulfilled at the filing date of the present application.

[8] As regards the [applicant’s] suggestion for referral of a point of law of fundamental importance to the EBA, 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 from the obiter dictum in case G 1/09. Furthermore, as none of the decisions cited by the [applicant] runs contrary to the present Board’s conclusions, in which case a further ruling by the EBA with a view to ensuring uniform application of the law might have been be necessary (A 112(1)), referral to the EBA would actually be inadmissible. Therefore, the Board does not follow the [applicant’s] suggestion in this respect.

[9] In summary, the request that the divisional application be treated as a validly filed divisional application is not allowable, and the appeal is therefore dismissed.

To read the whole decision, click here.

For some strange reason, the application number has been hidden, so I cannot even provide a link to the file wrapper of the parent application.