This is an appeal against the decision of the Receiving Section (RS) refusing to treat an application as a divisional application.
On May 26, 2010, a third party had requested a stay of proceedings concerning the parent application, a few days after the Examining Division had issued a decision to grant.
On June 8, 2010, the applicant filed a divisional application.
The mention of the grant of the parent application was published in the Bulletin.
On June 10, 2010, the Legal Division informed the parties that the proceedings for grant had been stayed as from May 26, 2010, and that the mention of grant would be corrected in due course.
On November 30, 2010, the RS informed the applicant that the application in suit could not be treated as a divisional, due to the stay of proceedings.
The applicant contested these findings and requested a decision. It then filed a decision against this decision.
The arguments of the applicant can be summarised as follows:
(a) The filing of a divisional application was not a procedural act in the proceedings for grant concerning the parent application. There was thus no basis in the EPC for refusing to process the application in suit as a divisional application on the grounds that the grant proceedings relating to the parent application had been stayed.
(b) Notwithstanding decision J 20/05, the purpose of a stay of the grant proceedings - namely to protect the rights of a person who claimed an entitlement - did not justify the legal consequence of refusing to process the application in suit as a divisional application after staying the proceedings in respect of the parent application. The rights of a third party claiming entitlement to the invention could also be preserved by just extending ex officio the stay of the proceedings with regard to the parent application to the newly filed divisional application. Decision J 20/05 should thus be reconsidered.
(c) The decision to grant a patent for the parent application had indicated that the mention of grant would be published on 9 .... The last opportunity to file a divisional application was thus 8 .... At that time, the public was not aware of the stay of the proceedings for grant concerning the parent application. A correction of the decision to grant was published in the European Patent Bulletin only later. The requirements of A 76 and R 36 had been fulfilled on the date of receipt of the divisional application and the subsequent stay of the proceedings for grant concerning the parent application had no impact on the validity of the divisional application.
The Board dismissed the appeal:
Legal basis
[2] The RS held that an applicant may not validly perform any procedural acts while the proceedings are stayed pursuant to R 14(1), and that this included the filing of a divisional application under R 36. The [applicant] objected to this finding, and argued that there was no legal basis for extending the effects of a stay of the grant proceedings concerning the parent application to the filing of a divisional application.
[3] It is established jurisprudence with regard to A 76 and R 25 EPC 1973 that it is the entitlement acquired by virtue of the parent application that gives the right to file a divisional application. This means that the rights derivable for the divisional application from the earlier application correspond to, but are also limited to, the rights existing in respect of the parent application at the filing date of the divisional application. The entitlement to file a divisional application according to A 76 and R 25 EPC 1973 is thus a procedural right that derives from the applicant’s status as applicant under the earlier application (J 2/01 [5.1, 6]; J 20/05 [2]). Therefore, as well as examining the other formal requirements for the filing of a divisional application, the RS has also to examine whether the applicant is entitled to file the divisional application by virtue of being the applicant in the earlier application (J 20/05 [2]). As a consequence, R 13 EPC 1973 was found to prevent, as lex specialis, the filing of a divisional application if the proceedings for grant concerning the pending earlier application had been stayed (J 20/05 [headnote, 3]; see also G 1/09 [3.2.5], confirming this finding).
[4] The principles set out in this jurisprudence are still pertinent under the revised law. R 13(1) EPC 1973 was streamlined and its wording aligned with the revised EPC. It was not changed in substance. R 36(1) as adopted by decision of the Administrative Council of the European Patent Organisation of 7 December 2006 (Special edition No. 1, OJ EPO 2007, 89) and the amended versions which entered into force on 1 April and 26 October 2010 (see decisions of the Administrative Council of 25 March 2009, OJ EPO 2009, 296, and of 26 October 2010, OJ EPO 2010, 568) continue to be based on the principle that a divisional application may be filed “relating to any pending earlier European patent application”. Therefore, the right to file a divisional application still follows from the entitlement acquired by virtue of the parent application.
[5] The board sees no reason to depart from the finding of decision J 20/05 [headnote, 3], confirmed by decision G 1/09 [3.2.5], that R 14 prevents the filing of a divisional application if the proceedings for grant concerning the earlier application are stayed. Even if the filing of a divisional application during stay of the proceedings for grant regarding an earlier application is not expressly excluded by the EPC, it is consistent with the purpose of R 14 and R 36. Since the rights in respect of a divisional application can be derived only from the earlier patent application, such patent application cannot form a sufficient basis for a right to file a divisional application if the right of the applicant to the grant of a European patent in respect of the earlier application is disputed and the proceedings for grant stayed under R 14(1). Furthermore, to allow the filing of a divisional application by an applicant whose entitlement is challenged would be inconsistent with and contrary to the fundamental objective of R 14(1), which is to preserve any potential rights a third party may have to the grant of a patent for the earlier application in dispute.
No automatic extension of the stay to any divisional application
[6] The [applicant] argued that the rights of a third party claiming entitlement to the invention for which protection is sought in an earlier application could also be preserved by extending ex officio the stay of the proceedings in regard to the earlier application to any subsequently filed divisional application. Decision J 20/05 should be reconsidered in this respect.
[7] The board cannot agree. Up to the grant of a European patent, the applicant alone has the status of party to proceedings before the EPO. A person other than the applicant is not a party to the proceedings for grant (A 115, second sentence, despite the use of the term “third party”). He may acquire party status in these proceedings in limited instances only, where the EPC provides for a right of a person other than the applicant to submit requests in respect of a patent application. R 14, which is based on A 61, is one such example. As decision J 20/05 [6] pointed out, it is not possible for a person seeking a decision within the meaning of A 61 to apply to the EPO under R 14(1) for an automatic and immediate suspension of proceedings regarding any divisional application deriving from an earlier application by way of an extension of the stay of the proceedings regarding the earlier application. The EPO is entitled to stay the proceedings for grant under R 14(1) only if there is clear and unambiguous proof that the claimant’s request in the proceedings before the national court is for judgment that he is entitled to the grant of the European patent application which is to be suspended, and not for any other application, however related it may be. Moreover, only proceedings for grant may be stayed which concern European patent applications pending at the date of filing of the request for stay. Furthermore, proceedings for grant cannot be stayed before the publication of the European patent application.
Therefore, R 14(1) cannot be regarded as conferring on the departments of the EPO the power to extend ex officio a stay of the grant proceedings concerning an earlier application to any divisional application proceedings filed thereafter. The EPC thus leaves no room for the alternative interpretation put forward by the [applicant]. In conclusion, the board agrees with the findings of decision J 20/05 that, in order to preserve the rights of a third party claiming entitlement to the invention for which protection is sought in an earlier application, and to prevent the applicant from prejudicing the third party’s possible rights, a European patent application which is filed under R 36 while the proceedings for grant of the earlier patent application are stayed may not be processed as a divisional application.
Immediate effect of the stay of proceedings for grant
[8] There remains the [applicant’s] argument that the requirements of A 76 and R 36 had been fulfilled on 8 June 2010, the date of receipt by the EPO of European patent application […] in suit, and that the subsequent communication ordering the stay of the proceedings concerning the parent application had no impact on the validity of the divisional application. The [applicant] thereby contests the lawfulness of a stay of the proceedings for grant under R 14(1) which is communicated after the date of publication of the mention of grant of the patent for an earlier application and affects a divisional application filed in the interval between the filing of a request for a stay of proceedings and the communication of the stay to the parties involved.
[9] The board notes that the [applicant] has neither objected to the communication from the Legal Division of 10 June 2010 nor requested an appealable decision. The board has thus no power to review the order for the stay of the proceedings for grant concerning the parent application. The further issue addressed by the [applicant] requires an answer in this decision only in as far as it raises the question of whether a stay of proceedings for grant communicated after the publication of the mention to grant is to be regarded as automatically null and void.
[10] The contested decision of the RS relied on decisions J 28/94 [3.1], J 7/96 [headnote, 2.1, 3, 8, 11]) and J 10/02 [3.1] to justify the stay of the proceedings for grant concerning the parent application as from the receipt of the allowable request for a stay on 26 May 2010. However, these decisions do not explicitly deal with the situation where a divisional application is filed before the date of publication of the mention of grant and a stay in regard to the parent application is communicated thereafter.
[11] The jurisprudence of the Legal Board of Appeal is nevertheless consistent in that a request for stay of the proceedings under R 14(1) may be filed up to the day before the date of the mention of grant of the European patent in the European Patent Bulletin (with regard to R 13(1) EPC 1973 see J 7/96 [headnote, 2.1, 3]; J 36/97 [3]). A stay of proceedings under R 14(1) takes immediate effect as from the date on which an allowable request is filed, i.e. as from the date the EPO is provided with satisfactory evidence that national proceedings have been instituted against the applicant seeking a decision within the meaning of A 61(1) (with regard to R 13(1) EPC 1973 see J 28/94 [2.1, 3.1]; J 7/96 [2.1]; [2]; J 10/02 [3.1]). Furthermore, the EPO is responsible for the grant proceedings up to the date of the publication of the mention of grant of the patent. This competence includes the publication of any necessary correction of a publication of the mention of grant (J 15/06 [11]). As a consequence, the publication of the mention of grant does not take away the competence of the Legal Division to issue a communication and, if requested, a decision ordering a stay of the grant proceedings, provided that an allowable request is filed before publication (see J 15/06 [14] with reference to decisions J 33/95 and J 36/97). It would moreover be contrary to the purpose of R 14(1) if procedural acts taken in the interim period between the filing of a request for stay and the decision of the Legal Division on this request were to produce legal effect irrespective of the final decision on the stay of the proceedings (see J 7/96 [8]). For the above reasons, the board cannot accept the argument that a stay of proceedings for grant communicated after the publication of the mention of grant is to be regarded as automatically null and void.
[12] In the present case, an allowable request for a stay of the grant proceedings concerning the parent application was received on 26 May 2010. As from that date, the grant proceedings had to be stayed without the EPO having to take a formal decision. The publication of the mention of grant of a patent for the parent application on 9 ... did not take away the competence of the Legal Division to separately issue a communication on the order of the stay as from 26 May 2010. The application in suit, i.e. European patent application No. […] was received by the EPO on 8 ..., i.e. after the effective date of the stay of the grant proceedings concerning the parent application. R 14(1) together with R 36(1) thus prevented the valid filing of the application in suit as a divisional application of the parent application. As a consequence, the appeal must fail.
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