This is an appeal by the patent proprietor against the revocation of its patent by the Opposition Division.
In its opposition, opponent 1 had inter alia questioned the validity of the patent because it had been filed as a divisional application at the French patent office (INPI), although A 76 required divisional applications to be filed at the EPO.
The OD had endorsed this approach and had considered that the divisional did not benefit of the filing date of the parent application and, as a consequence, was lacking novelty over the parent application.
The Board disagreed:
*** Translation of the French original ***
Status of the application on which the patent-in-suit is based
Divisional application and place of filing
[1.1] A 75 EPC 1973, which applies in the present case, reads:
A European patent application may be filed:(a) at the EPO at Munich, or its branch at The Hague, or(b) if the law of the Contracting State so permits, at the central industrial property office or other competent authority of that State. An application filed in this way shall have the same effect as if it had been filed on the same date at the EPO.(2) …(3) No Contracting State may provide for or allow the filing of European divisional applications with an authority referred to in paragraph (1)(b).
Pursuant to A 75(3) EPC 1973 divisional applications must be filed at the EPO. The Contracting States are not entitled to allow or require divisional applications to be filed with their national authorities. If a divisional application is sent to a national authority, the latter does not have to transmit it to the EPO. However, if it does, in application of the principles of good cooperation between administrative authorities, then this application shall have as date of receipt the date on which it reaches the EPO. In other words, it is only when the EPO recieves the documents that are to constitute a divisional application that they are treated as a filing of a divisional application. Incidentally, this finding is laid down in the Guidelines for Examination in the EPO, part A, chapter IV, point 1.3.1.
The travaux préparatoires for the EPC 1973 show that it was only in the course of the intergovernmental conference for establishing a European patent system in November 1971 that the decision was taken to expressly provide in the text of the EPC that divisional applications were to be filed at the EPO only and to exclude, as a consequence, filings with the national authorities (“The group, after deliberation, has chosen a solution consisting in providing that divisional applications may only be filed at the EPO and that no state may provide for or allow such filings with the central industrial property office.”) Considerations related to the examination of the parent application with respect to national provisions regarding the maintenance of secrecy (mise au secret), the transmission of the parent application and the divisional application to the EPO, and the possible legal effect of a divisional being filed with a national authority (the application and its parent application would have been deemed to be withdrawn in case they were not transmitted, A 77(5) EPC 1973) led the legislator to prohibit the filing of divisional applications with the national authorities, for the sake of clarity. See document BR/144/71 dated December 16, 1971, point 18.
[1.2] In the present case, the patent application on which the patent was based has been filed, as shown by form 1001, at the INPI on March 21, 2000 (stamp on form 1001.6), and has been transmitted by the INPI to the EPO, where it was received on March 30, 2000 (stamp on box 3 of form 1000.1). The fact that the box is ticked in section 35 of form 1001 clearly indicates that the the European patent application is a divisional application; the number indicated in this section (n° 96 401 179.5) is the number of the parent application. The priority claimed in section 25 of form 1001 is the priority of the parent application. The Contracting States designated in section 32 of form 1001 are the same as those designated by the parent application. Moreover, the applicant is the same (see sections 7 to 9 of form 1001).
[1.3] Considering all these pieces of information the only objective conclusion possible is that the patent application on which the patent-in-suit is based is a divisional application which has been erroneously filed with a national authority – first mistake – and to which that authority, here the INPI, has allocated a number [as if it was] a patent application filed under A 75(1)(b) EPC 1973 […] – second mistake –, which allocation has not been expressly corrected or nullified by means of a communication of the Receiving Section (RS) – third mistake.
[1.4] However, it is clear from the file that the RS, which has exclusive competence to allocate a filing date (cf. J 18/86), has, upon receipt of the European patent application, on March 30, 2000, allocated the filing date of the earlier application, i.e. June 3, 1996, to it and has indicated on the first sheet of the application as published (A1 document) that the application was a divisional application.
[1.5] The Board of appeal agrees with the assertion of […] opponent 1 that the date (“21-03-2000”) indicated as filing date under the heading “Remarks” of the publication EP 1 026 438 A1 is incorrect – fourth mistake. The correct date was March 30, 2000, i.e. the date on which the divisional application was received at the EPO. However, the Board is of the opinion that this is nothing more than an erroneous date. Howally [NB: the French has “toutefin”, which appears to be a contraction of “toutefois” and “enfin”, which might be best rendered by a contraction of “however” and “finally”], it is clear from the cover sheet of the application as published that the RS has treated this application as a divisional application.
Divisional application and pending earlier application – R 25 EPC 1973
[1.6] For a divisional application to be treated as such it is necessary for it to have been filed at a moment when the earlier application was still pending. The present situation is governed by R 25 EPC 1973, which reads:
“R 25 EPC 1973 Provisions for European divisional applications(1) The applicant may file a divisional application relating to any pending earlier European patent application.”
The communication pursuant to R 51(4) EPC 1973 for the earlier application n° 96 401 179.5 is dated March 30, 2001; the mention of the grant has been published on October 17, 2001. The transmission of the documents by the INPI has shifted the date of receipt at the EPO from March 21, 2000 (date of receipt at the INPI, stamp on form 1001.6) to March 30, 2000. Thus the earlier application was still pending on March 30, 2000, when the divisional application was received at the EPO.
The Board notes that this point is not contested by […] opponent 1 […].
[1.7] Consequently, the Board can only conclude, as did the RS, that the present application satisfies the requirements of A 76(1), first sentence, EPC 1973, together with R 25(1) EPC 1973. Thus the patent application on which the patent-in-suit is based is a divisional application.
It is deemed to have been filed on the date of filing of the earlier application and has the benefit of the right to priority in respect of the subject-matter that does not extend beyond the content of the earlier application as filed (A 76(1), second sentence, EPC 1973).
As the patent is deemed to have been filed on the date of filing of the earlier application, that application (document D14, EP-A-0 747 796) does not form part of the state of the art for the patent-in-suit.
In view of the above the decision of the OD has to be set aside.
[1.8] Incidentally, the Board wishes to emphasise that an application that has been filed as a divisional application can be treated as such or not. If it is not treated as such, there cannot be grant proceedings. The legislator has not provided the possibility of a posteriori allocating the date of receipt of the divisional application as date of filing of a new application, cf. G 1/05 [11.1] and T 600/08 [2.3]. Even if the RS, when examining the application in view of formal requirements, or even the Examining Division, when carrying out the substantial examination, had erroneously treated the application under consideration as a divisional application and a patent had been granted, the OD is only competent for examining the validity (bien-fondé) of the grant of the European patent within the very strict framework of the grounds for opposition a restrictive list of which is provided by A 100 EPC 1973.
Reimbursement of the appeal fee – R 67 EPC 1973 (applicable here)
The Board of appeal is of the opinion that the decision issued by the OD is insufficiently reasoned and, therefore, does not satisfy the requirements of R 68(2) EPC 1973, which applies in the present case. The OD only cited some applicable legal provisions without taking account of all the objective facts of the present case. For instance, it has not considered the possible error on behalf of the applicant when it filed the patent application with the national authority, the context of the transmission by the INPI of the patent application under consideration as divisional application, the clear and unambiguous indications of all of the elements of form 1001 and in particular of section 35 concerning the explicit reference to the earlier application. A sufficiently reasoned decision taking account of all the facts of the case would have allowed the appellant and the Board to understand why the OD had decided not to treat the application under consideration as a divisional application. The absence of sufficient reasons as required by R 68(2) EPC 1973 constitutes a substantial procedural violation justifying – the other requirements of R 67 EPC 1973, which is applicable here, being fulfilled – that the appeal fee be reimbursed, the impugned decision set aside and the case remitted to the first instance (A 111(1) EPC 1973).
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