The present decision deals with a late filed divisional application.
The mention of the grant of the “parent” application was published on April 2, 2008.
The divisional application was received at the EPO after that date.
With letter dated April 14, 2008, the applicant contended that a postal strike had taken place in the Munich area at least on April 1, 2008; he therefore assumed that the first divisional application had been filed in due time.
On April 24, 2008, the applicant was informed by the Receiving Section (RS) that European the late filed application was not being processed as a European divisional application.
On May 2, 2008, the applicant filed another divisional application (second generation divisional application with respect to the “parent application”).
The applicant requested an appealable decision pursuant to R 112(2). He submitted that the finding of loss of rights was inaccurate because in view of the postal strike the first divisional application had been filed in time and therefore should be treated as a divisional application. If the postal strike did not result in the first divisional being regarded by the EPO as having been filed in time as an auxiliary request he asked for further processing in relation to the filing of the first divisional.
In response, the RS informed the applicant that the alleged postal strike could not have any relevance in the present context, because R 134(2) clearly applied to periods (time limits) only and thus was not applicable. R 36(1) did not set a time limit but a condition for the filing of a divisional application, namely the pendency of the earlier European patent application (see e.g. J 24/03 [4]). The present European patent application could therefore not be processed as a divisional application. The auxiliary request for further processing also referred to the failure to observe a time limit. Consequently, further processing was not available either.
The applicant maintained all requests. He argued that J 24/03 was not applicable to the present case, because former R 85(2) EPC 1973 referred to a “time limit”, whereas new R 134(2) referred to a “period”. The applicant further submitted that R 134(2) was more generally applicable than A 122. He concluded this from the fact that A 122 EPC 1973 was not applicable to priority-claiming applications, whereas R 85(2) EPC 1973 (R 134(2)) was.
On April 27, 2010, the RS issued a decision rejecting all the applicant’s requests.
The applicant then filed two appeals against this decision, one for the first generation divisional (case J 19/10) and another one for the second generation divisonal (J 26/10).
Before the Board, the appellant maintained all arguments previously made in this matter. Furthermore, he argued that the wording “The time limit for filing divisional applications must be observed” used in the examination report dated 19 July 2006 on the “parent” application would lead a reasonable addressee to conclude that there was a time period in which divisional applications could be filed and hence, that this period could be extended, e.g. in the case of a postal strike. By not allowing him an extension, the decision under appeal had violated the principle of protection of legitimate expectations.
The Board first criticized the RS for having issued one single decision for both divisional applications. It then deals with the subject-matter of the appeal.
NB: For reasons that I do not understand the Board has decided to hide the application numbers and to replace them by XXXXXXXX and YYYYYYYY. In order to make the decision more readable, I rather refer to the “divisional” application and to the “parent” application.
[3] The subject-matter of the present appeal is the request to set aside the noting of loss of rights in respect of [the “divisional” application] (main request), the request for further processing in respect of [the “divisional” application] (auxiliary request) and the request that [the “divisional” application] be treated as a divisional application of [the “parent” application].
Main request
[4] The request that the noting of loss of rights be set aside is allowable if the decision of the RS of 24 April 2008 that [the “divisional” application] would not be processed as a European divisional application of [the “parent” application] was incorrect. However, that is not the case.
[5] According to R 36(1), a divisional application may be filed relating to any pending earlier European patent application. Where the earlier application proceeds to grant, an application is pending up to but not including the date of publication of the mention of grant in the European Patent Bulletin (Notice dated 9 January 2002, OJ EPO 2002, 112; J 24/03 [4]; J 7/05 [2.1]; G 1/09). Therefore, the parent application was no longer “pending” pursuant to R 36(1) when [the “divisional” application] was filed as a divisional application on 2 April 2008. This fact is not disputed by the appellant.
[6] However, the applicant contended that a postal strike took place in the Munich area at least on 1 April 2008 and consequently assumed that [the “divisional” application] should be deemed to have been filed in due time according to R 134(2) and could be treated as divisional application. R 134(2) reads as follows:
“If a period expires on a day on which there is a general dislocation in the delivery or transmission of mail ..., the period shall extend to the first day following the first day of the interval of dislocation ...” (emphasis added).
Therefore R 134(2) is applicable only if the wording “... to any pending earlier European patent application ...” pursuant to R 36(1) imposes a period, i.e. a time limit (emphasis added).
[7] In several earlier decisions, the boards of appeal have ruled that the wording “... to any pending earlier European patent application...” in R 36(1) does not set a period/time limit, but rather sets a condition; see e.g. J 10/01 [15-20], J 24/03 [4], J 18/04 [2.1], J 7/05 [3] and G 1/09 [3.2.4]. In view of this established case law, particularly the very thorough and detailed reasoning in J 18/04, the board sees no reason to take a different approach in the present case. Nor is it convinced by the arguments brought forward by the appellant.
[7.1] The argument of the appellant that J 24/03 was not applicable to the present case, because former R 85(2) EPC 1973 referred to a “time limit” whereas new R 134(2) referred to a “period” is legally not sustainable in the light of the documents underlying the introduction of the EPC 2000. Special edition No. 5 OJ EPO 2007, 200, under “R 134” refers the reader to “Explanatory remarks 2002: CA/PL 5/02 Rev. 1 Add. 1”. In “Chapter V - R 85 EPC 1973” (corresponding to R 134(2)) of these “Explanatory remarks” it is noted that “Amendments are purely editorial”. Therefore, no legal consequences can be inferred from the replacement of “time limit” in R 85(2) EPC 1973 by “period” in R 134(2). In this regard reference is also made to J 18/04 [21] where the board found that in R 83 EPC 1973 (“Calculation of time limits”) the term period was the only logical substitute for the term time limit throughout the wording of the rule.
[7.2] Furthermore, the appellant contends that R 134(2) is more generally applicable than A 122. He concludes this from the fact that A 122 EPC 1973 was not applicable to applications claiming priority, whereas R 85(2) EPC 1973 was applicable in such cases. This may be so, but it results from the fact that A 122 and R 134(2) have differently worded requirements. Aside from that, A 122 EPC 1973 was not applicable to applications claiming priority (period of twelve months), because re-establishment into the time limit referred to in A 87(1) EPC 1973 was explicitly excluded in A 122(5) EPC 1973, whereas R 85(2) EPC 1973 did not comprise such an exclusion. By contrast, the EPC – including A 122 and R 134(2) – draws no distinction with regard to the concept of “time limit”. In the absence of any indications to the contrary, if a term has the same wording it must be assumed to have the same meaning.
[8] Finally, the appellant argues that an extension of the “period for filing a divisional application” has to be allowed due to the principle of protection of legitimate expectations. He infers this from the fact that in non-unity communications from the EPO, e.g. in the examination report dated 19 July 2006 concerning [the “parent” application], the standard wording “The time limit for filing divisional applications (R 25(1) EPC 1973) must be observed” is used.
[8.1] According to the case law of the boards of appeal, the principle of protection of legitimate expectations governing the procedure between the EPO and applicants requires that communications addressed to applicants must be clear and unambiguous, i.e. drafted in such a way as to rule out misunderstandings on the part of a reasonable addressee (G 2/97).
The board is not satisfied that the appellant can rely on the principle of protection of legitimate expectations, even if it is assumed in the appellant’s favour that the examination report of 19 July 2006 contained misleading information in mentioning a time limit to be observed pursuant to R 25(1) EPC 1973. At least three of the above-mentioned decisions (see point [7]) finding that R 25(1) EPC 1973 (R 36(1)) does not set a time limit but a condition, namely J 10/01, J 24/03 and J 18/04, were issued well before the notification of the examination report dated 19 July 2006. Here the board would refer in particular to J 24/03 and J 18/04, which were published in the Official Journal of the EPO and substantiated that finding in considerable detail.
[8.2] In view of this jurisprudence of the Legal Board of Appeal, the appellant’s professional representative could not simply rely on the legal accuracy of the wording of the information in the examination report of 19 July 2006. The relevant information was obviously intended only to remind the applicant, as a courtesy service, of the need to file a divisional application in respect of that part of the invention which was held to lack unity. This assessment is also supported by the wording of the respective passage of the communication of 19 July 2006 […], informing the applicant that
“The subject-matter to be excised may be made the subject of one or more divisional applications”
and thus just provided as a recommendation or hint as to how to overcome the non-unity objection raised by the examining division. Unreserved reliance on the correctness of the said information is all the more unjustified since the professional representative must or should have known that EPO examiners do not normally handle procedural issues such as valid filing dates, which are generally dealt with by the RS.
[8.3] In the present case the professional representative could be expected to be familiar with procedural matters in general, and the boards’ detailed and consistent jurisprudence in particular (see J 5/02 [3.2]); T 267/08 [5.2.1]). He has also to be aware that any questions relating to the filing date should be clarified with the RS (see J 2/08 [55]). Taking all these circumstances into account it cannot be assumed that a reasonable addressee would and could justifiably conclude that there is a time period in which divisional applications can be filed and that such a period can be extended in the case of a general dislocation of mail services within the meaning of R 134(2).
[9] Since for the reasons stated above R 36(1) does not set a “period/time limit” and the principle of protection of legitimate expectations does not apply, R 134(2) (requiring a “period”) is not applicable. Thus the question whether there was a “general dislocation in the delivery or transmission of mail” within the meaning of R 134(2) can be left undecided. Hence, the main request that the noting of loss of rights be set aside cannot be allowed.
Auxiliary request
[10] As an auxiliary request the appellant seeks further processing of [the “divisional” application] as a divisional application from [the “parent” application] pursuant to A 121. However, A 121(1) also requires that
“... an applicant fails to observe a time limit ...” (emphasis added).
Since, as has been stated above, the EPC draws no distinction with regard to the concept of “time limit” and in the absence of any indications to the contrary, this term must be assumed to have the same meaning in A 121(1) as in R 134(2). Due to the fact that R 36(1) does not set a “period/time limit” A 121(1) is not applicable to this case either. Consequently, the auxiliary request too must fail for this reason alone.
[11] Since both the main request and the auxiliary request are rejected, [the “divisional” application] cannot be treated as a divisional application.
Request for refund of fees
[12] The board considers that the request for “a refund of all refundable fees” submitted with the faxed letter dated 16 May 2011 fails to make clear either its scope and its content and is not admissible. Thus, this request cannot be dealt with and has to be disregarded. In the absence of any substantiated request by the appellant it is not up to the board to identify which fees in the first-instance and appeal proceedings might be refundable. Since the request is clearly and explicitly directed to “refundable” fees, it a priori does not encompass a possible reimbursement of the appeal fee, because in the present case the appeal fee is obviously “not refundable” pursuant to R 103(1)(a). […]
The appeal is dismissed.
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As already mentioned, there is also a parallel case (J 26/10).
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