J 20/12 – Withdrawn And Not Pending

Here is another decision of the Legal Board concerning a decision of the Receiving Section (RS) not to treat an application as a divisional application. The applicant boldly tried to apply G 1/09 to a withdrawal.

The parent application had been unconditionally withdrawn on January 19, 2009, but on February 26, 2009, the appellant filed a request to correct this withdrawal on the grounds that an error had been made: it had intended to withdraw an entirely unrelated application. This request was ultimately denied by the Legal Board of Appeal (decision J 1/11), essentially because by the time the request for correction had been filed notice of the withdrawal had already been recorded in the European Patent Register (on February 6, 2009). Meanwhile, on March 10, 2009, that is, after the parent application had been withdrawn but while proceedings for correction of the withdrawal were pending, the appellant filed the divisional application to the withdrawn parent application. On October 27, 2011, the appellant was informed by the RS that the divisional application was not being processed as the parent application had been withdrawn. This view was confirmed by the decision of the RS of May 29, 2012, in which it was stated that, according to R 36(1) EPC, an applicant could only file a divisional application “relating to any pending earlier European patent application”. In the case at issue, the parent application was no longer pending as it had been unconditionally withdrawn.

The applicant argued that when an application is erroneously withdrawn (as was said to be the case for the parent application) R 139 allows for the correction of errors. As at the time of the filing of the divisional application it had not been finally established whether the request for correction would be allowed or not, the parent application should have been considered as still “pending”. In support of its view, the appellant relied on decision G 1/09, as in the present case not all legal remedies had been exhausted when the divisional application was filed. In contrast thereto, decision J 4/11 could not apply, as that decision dealt with a case where the application was “deemed to be withdrawn” rather than withdrawn by the appellant.

[1] The Board agrees with the appellant that the starting point of the legal analysis should be decision G 1/09. According to this decision, point [1] of the Reasons:

“… the amended version of R 36 which entered into force on 1 April 2010 is still based on the principle that a divisional application may be filed ‘relating to any pending earlier European patent application’.”

Point [3.1] of Reasons goes on to state that:

“It is common ground that the EPC does not contain a definition of the notion ‘pending European patent application’. In particular, the EPC does not define the points in time at which the pending status of an application begins and ends in all possible situations. An interpretation of the expression ‘pending European patent application’ is therefore necessary.”

As to this, according to point [3.2.4]:

“… a ‘pending (earlier) European patent application’ in the specific context of R 25 EPC 1973 is a patent application in a status in which substantive rights deriving therefrom under the EPC are (still) in existence.”

Point [4.2.1] then goes on to state that:

“A 67(4) EPC 1973 clearly indicates until when such substantive rights deriving from a European patent application are in existence if a patent is not granted. In particular, it provides that the European patent application shall be deemed never to have had the effects of provisional protection when it has been withdrawn, deemed to be withdrawn or ‘finally refused’. … Substantive rights of the appellant under A 67 EPC 1973 may therefore continue to exist after refusal of the application until the decision to refuse becomes final (rechtskräftig, passée en force de chose jugée). Third parties using the invention before the decision to refuse has become final incur the risk of becoming liable under national law based on A 67 EPC 1973.”

And, further, in point [4.2.3]:

“A 67(4) … is a self-contained provision indicating the point in time at which substantive rights conferred by a European patent application and therefore its pending status must end.

[4.2.4] From the above the Enlarged Board of Appeal (EBA) concludes that under the EPC a patent application which has been refused by the Examining Division (ED) is thereafter still pending within the meaning of R 25 EPC 1973 until the expiry of the period for filing an appeal and, on the day after, is no longer pending if no appeal is filed. The same conclusion applies to R 36(1) EPC 2000 both in its former and its current version.”

[2] The subject matter of decision G 1/09 was a divisional application filed after a decision refusing the parent application had been rendered, but before the appeal period had expired. According to decision G 1/09, such a decision only became final after the appeal period had expired without an appeal having been filed. The reason for this could be found in the wording of A 67(4), which refers to an application that has been “finally refused”. Only after the expiry of the appeal period could it be said that the application was finally refused. The EBA did not deal with the other two alternatives of the above provision, namely an application that had been withdrawn or was deemed to be withdrawn.

[3] Decision J 4/11 dealt with the case of a divisional application filed after the parent application was deemed to be withdrawn due to non-payment of the renewal fees. The Board in accordance with the above distinction made in A 67(4) noted that in such a case the withdrawal took place automatically on the occurrence of the relevant event (non-payment) and no decision of the Office was necessary to give effect to the withdrawal. Therefore, the case could be distinguished from the one in decision G 1/09 in that no adverse decision had been rendered. In such a case, the application was held to be no longer pending as of the date of the deemed withdrawal.

[4] In the present case the Board is faced with the third kind of situation referred to in A 67(4), namely where the application is voluntarily withdrawn. The present case can therefore be distinguished from those in G 1/09 and J 4/11 but the principles established by those cases can nevertheless be applied to the present case.

[5.1] As to the position immediately after the application was withdrawn and before any request for correction under R 139 was filed, the effect of the filing of the withdrawal was that the application was thereupon withdrawn. Such withdrawal took place without any action on the part of the Office. Prima facie, therefore, the application was thereafter no longer pending.

[5.2] In writing, the appellant argued that the effect of a request under R 139 was that the withdrawal was thereupon ex post facto rendered only provisional […], so that the application was then still pending until a final decision on the request.

[5.3] The logical consequence of this argument would be that an application would potentially remain pending ad infinitum after it was withdrawn, because there is no time limit placed on the right to make an application under R 139. The appellant did not maintain this position at the oral proceedings, but rather refined its argument by saying that an application should be considered pending at least in those cases where a request for correction was filed and where such request was not completely without merits.

This was said to be true for the present case by virtue of what the appellant asserted to be the somewhat conflicting case law relating to correction under R 139. It was said that the application for correction was certainly not completely without merits because until the decision of the Board of Appeal on the request (decision J 1/11) it was not clear that rectification was no longer possible where the notice of withdrawal had been recorded in the European Patent Register, as opposed to its being published in the European Patent Bulletin […]. The appellant did not take a position on the status of an application before any such request is filed or where no request for correction is filed at all.

[5.4] The Board would first remark that the argument appears to be without any legal foundation. It also does not deal with the position before a request for correction is made, nor where no such request for rectification is made at all, and so leaves these situations entirely open. Further, the distinction made is also wholly unworkable: there is no objective standard by which it can be judged whether a request for correction is “not completely without merits.”

[5.5] Turning rather to the substance of the point, as already noted, the decision G 1/09 links the question of whether an application is pending with the existence of “substantive rights” in the patent application.

[5.6] Decision J 4/11 dealt in detail with the issue of “substantive rights” in this context:

“[5] The question is thus whether substantive rights deriving from the grandparent application were still in existence when the parent application was filed. The EBA did not give any definition of the expression “substantive rights” in this context. The Board nevertheless extracts the following points from the EBA’s reasons:

(a) “Substantive rights” in this context include the provisional protection conferred after publication of the application by virtue of A 67(1), which in turn refers to the protection conferred by A 64. See point [4.2.1] of the Reasons. The combined effect of these two articles is to provisionally confer on an applicant the same rights in the designated Contracting States as would be conferred by a national patent granted in those States. The Board will refer to these rights as the A 64 rights.

(b) The EBA did not expressly say (and did not need to say) whether there might be other relevant types of substantive rights.

(c) A patent application involves two different aspects. On the one hand a patent application is an object of property as set out in A 71 to A 74, conferring on the applicant, inter alia, the provisional A 64 rights. On the other hand it involves procedural rights which the applicant is entitled to exercise by virtue of A 60(3) EPC 1973. The expression “European patent application” may therefore stand for substantive rights as well as for procedural rights of the applicant. See point [3.2.1] of the Reasons. Since R 25(1) EPC 1973 (see now R 36(1)) refers to “any pending patent application” and not to pending proceedings before the EPO, it is not relevant for the purposes of R 25(1) EPC 1973 whether proceedings are pending before the EPO. Pending proceedings cannot be equated with a pending application. See points [3.2.2] and [4.2.5] of the Reasons.

(d) A 67(4) provides for the point in time when the A 64 rights must end and thereafter are no longer still in existence. This is when, in the words of A 67(4), the application has “been withdrawn, deemed to be withdrawn or finally refused.” […]

The prima facie effect of a deemed withdrawal on the A 64 rights

[8] A 67(4) provides that a European patent application shall be deemed never to have had the effects set out in A 67(1) and (2) when it has been (a) withdrawn, (b) deemed to be withdrawn or (c) finally refused. The EBA in G 1/09 was concerned with the case of the refusal of an application by the ED: for the purposes of A 67(4), at what point in time is an application to be considered as “finally refused” where no appeal is filed against the decision refusing the application? The Board concluded that this is when the time limit for filing an appeal against a decision refusing the application expires, since it is at this point that the decision to refuse the application becomes final. The retroactive effect of a decision dismissing the appeal does not alter the pending status of the application. See points [4.2.1-2] of the Reasons. Up until this point a substantive right under the application therefore still subsists. This was sufficient to answer the question which had been referred to the EBA.

[9] The present Board is concerned with a different case, namely a deemed withdrawal of an application.

[10] A 67(4) provides that an application is deemed never to have had the effects provided for under A 67(1) and (2) when it is deemed to be withdrawn. The EBA took the position (point [4.2.3] of the Reasons) that A 67(4) is a self-contained provision indicating the point in time at which “substantive rights conferred by a European patent application and therefore its pending status must end.” […]  

[11] As to the point in time when this deemed withdrawal took place, A 86(3) EPC 1973 (see now A 86(1)) simply provides that if the renewal fee (and any additional fee) is not paid in due time, the application shall be deemed to be withdrawn. Although the applicant must be informed of the loss of rights (R 69(1) EPC 1973, see now R 112(1)) the withdrawal takes place at that point in time as a matter of law without any decision of the Office. As explained in G 1/90 [6], in such a case the loss of rights occurs on expiry of the time limit that has not been observed. See also G 4/98 [3.3].

[12] Prima facie, therefore, the A 64 rights under the grandparent application were no longer subsisting when the time for payment of renewal fee expired, which was before the date when parent application was filed.

The effect of the possibility (and the fact) of the filing of a request to grant re-establishment of rights

[13] If the Board were to accept the appellant’s arguments, which are based on an analogy with the situation of “final refusal” of an application, it would follow that an application would remain pending after it had been deemed to be withdrawn for as long as the period for making a request to grant re-establishment of rights continued to run. Further, if and when such a request was made, the application would remain pending at least until the date when the request for re-establishment was finally determined.

[14] By way, first, of a general remark, the wording in A 67(4) appears to the Board to have been chosen with care, particular the positioning of the word “finally”. In the case of a refusal of an application, the filing of an appeal will have the effect of suspending the effect of the order refusing the application (A 106(1)). It is logical therefore to speak of the “final” refusal of an application in this context, since the effect of the refusal of the application by the ED is suspended in the event of an appeal. In such a case the suspensive effect of an appeal is ended in the event of a decision dismissing the appeal, from which point the appealed decision retrospectively takes full effect. At the point of dismissal of the appeal, the application can be said to be finally refused and the decision of ED is made final.

[15] On the other hand, in a case where an application is deemed to be withdrawn under A 86(3) EPC 1973 for non-payment of a renewal fee it does not appear to the Board to be logical to speak of the “final” deemed withdrawal of the application. As already noted, the point in time when the application is deemed to be withdrawn is the point when the due time for payment of the renewal fee expires; the loss of rights occurs on the expiry of the time limit that has not been observed and, as such, is final in itself.”

[5.7] Thus far, the Board sees no difference between the case of an application deemed to be withdrawn due to the non-payment of fees and an application that has been voluntarily withdrawn by a communication from the applicant. In neither case is the withdrawal the result of a decision taken by the Office. In the case of a withdrawal, the Office simply complies with the instructions given by the applicant. It has to do so. Compliance with the applicant’s instructions does not amount to a decision that adversely affects the applicant, and consequently the latter cannot appeal against the action of the Office in carrying out the instructions. The applicant could only do so if the Office were to decide not to comply with its request. As with an application which has been deemed to be withdrawn (as in J 4/11), A 64 does not speak of a “final” withdrawal of an application, nor is it logical to do so. Consequently, the Board concludes that the rights conferred on the parent application according to A 67(4) prima facie came to an end at the moment of withdrawal of the application.

[5.8] The Board in J 4/11 went on to consider whether this result might be any different in the light of any special provisions under the EPC that somehow altered the result as provided for in A 67(4), in particular by providing that the filing of a request for re-establishment had the effect of reviving the application. It concluded that there were no such provisions and that a failed request for re-establishment also did not have such an effect. It is not in dispute that there are no provisions in the EPC expressly providing that the filing of a request for correction of a withdrawal has suspensive effect on the withdrawal.

[5.9] What the appellant in effect appeared to argue was that the possibility of requesting correction could be regarded as a substantive right in relation to the application that had been mistakenly withdrawn, since it meant that the appellant still had a right of redress and thus the withdrawal was not final. The issue of what amounted to a right of redress in this context was considered by the Board in J 4/11:

“[17] In G 1/09 [4.2.2] the EBA, when dealing with the issue of when an application should be considered to be (finally) refused, referred to and relied on the jurisprudence of Contracting States, pursuant to which “decisions do not become final until the expiry of the respective period for seeking ordinary means of legal redress.” In effect, the appellant argues that the right to seek re-establishment is a right of redress, so that while the period for seeking such redress against the deemed withdrawal of the application was still running, the deemed withdrawal was not a final withdrawal. The Board considers that this is not a correct analysis. First, the argument overlooks the distinction, already discussed, between a refusal, which requires a decision by the Office which is then challengeable by way of an appeal, and a deemed withdrawal, which takes place automatically by operation of law. The above statements by the EBA in G 1/09 were made in the express context of a decision by a department of first instance refusing an application: see point [4.2.2] of the reasons. Second, the Board considers that the concept of redress is appropriate only in the context of correcting a wrong. Thus while it is appropriate to speak of seeking redress against an allegedly wrong decision of the Office refusing an application, it is not appropriate to speak of seeking redress against the deemed withdrawal of an application. A person requesting re-establishment of rights does not seek correction of a wrong, i.e. allege that the deemed withdrawal was wrong as a matter of law. Rather he requests that he should be excused the consequences of the withdrawal in the particular circumstances of the case. In contrast, the procedure under R 69 EPC 1973 (now R 112) by which a person can challenge a notice of loss of rights […] is a process for seeking ordinary means of legal redress against an alleged wrong of the Office. This conclusion appears to be fully be consistent with the position under French, German and Swiss national law, as summarised in D1, points 4.1 to 4.3.”

[5.10] The Board thus came to the conclusion that the possibility of re-establishment of rights did not alter the finding that an application which has been “deemed to be withdrawn” under A 67(4) was no longer pending as of the time it was deemed to be withdrawn. The Board considers that for the same reasons the possibility of making a request for correction is not a means of legal redress and that a withdrawn application cannot be considered as still pending merely where a request for correction has been filed. First, whereas a refusal requires a decision by the Office which is then challengeable by way of an appeal, a withdrawal takes place by virtue of the act of the applicant. Second, a person requesting rectification of a withdrawal does not seek correction of a wrong, i.e. allege that the withdrawal was wrong as a matter of law. Rather he requests that he should be relieved from the consequences of the mistaken withdrawal in the particular circumstances of the case.

[5.11] In conclusion, from the wording of A 67(4) (“withdrawn” in contrast to “finally refused”), and the further clarification given in decision J 4/11 as cited above, it can be concluded that an application is no longer pending as from the moment after it has been withdrawn. This is not altered by the possibility of filing a request for correction under R 139, nor by the actual filing of such a request. In other words, an application is not pending because a correction of a withdrawal under R 139 has been requested.

[5.12] The mere possibility that a filed request for correction might be successful does not lead to a different conclusion. Any result of a potential decision to grant correction comes only into effect as from the time of such decision and for the future.

In J 3/01 the Board said:

“… the so-called retrospective effect of a correction under R 88 EPC [1973] does not cancel previous procedural events, but only causes the document corrected to be considered from the time of correction and for the future as filed ab initio in the corrected version. Correction under R 88 EPC [1973] does not reverse the effect of decisions already taken on the basis of the uncorrected document and does not re-open a procedural phase already terminated … In other words, a procedural loss of right only indirectly caused by the incorrect document will not be remedied by a later correction of the document pursuant to R 88 EPC [1973]. This principle also characterises the functional and essential difference between a correction under R 88 EPC [1973] on the one hand and restitutio in integrum pursuant to A 122 on the other hand.”

Also decision J 6/02 emphasises that R 139 only concerns errors in documents and that correction under the rule does not allow previous procedural effects to be set aside. Rather, it only causes the document corrected to be considered from the time of correction and for the future as filed ab initio in the corrected version, as is set out in great detail in point [15] of the Reasons:

“[15] When regarding a request for correction under R 88 the Board has furthermore to consider the limited function of this Rule in the system of legal remedies provided for in the EPC (see above point 4, functional restriction). As already mentioned above, R 88 concerns the correction of errors in documents filed with the EPO. According to the first sentence a correction is limited to linguistic errors, errors of transcription and mistakes in any documents filed with the EPO.

Therefore a correction under R 88 is a procedural means available to rectify misleading information caused by such an error. The established case law of the Boards of appeal also allows correction under R 88 of the content of a document filed with the EPO even if the correction leads to an amendment or to a revocation of the procedural declaration or act relative to this document, whereby rights of the party concerned can arise or a waiver of rights can be rescinded.

But such a correction cannot have any effect on the procedural situation that has already ensued in direct or indirect consequence of a written error by failure to meet a time limit during the pending proceedings. In the present case, appellant’s request for correction is aimed at cancelling the legal effect under R 108(2) i.e. at reversing the legal effect that the designation of France was deemed to be withdrawn since there was no designation fee dedicated to France and no additional fee was paid within the period of grace under R 85(a) by 20 December 2000.

To cancel procedural effects after failure to meet a time limit would be to apply R 88 beyond its clear and unambiguous wording (cf. J 25/01) and would violate the scope of application of A 122 which stipulates specific requirements for grant of re-establishment of rights. This conclusion is confirmed by A 122(5) which strictly forbids re-establishment of rights after failure to meet the time limit under inter alia A 79(2). A 122 provides for a re-establishment of rights where the applicant or proprietor of a European patent was unable to observe a time limit vis-à-vis the EPO and in consequence a loss of rights occurred. If the requirements of this provision are met – other than by a correction under R 88 – the procedural effect is cancelled, and the former procedural situation reinstated, so that the applicant’s rights are re- established. Thus, such a request for restitutio in integrum is the appropriate means to restore the procedural situation before the failure to meet a time limit. But according to A 122(5) restitutio in integrum is excluded after failure to meet a time limit under A 79 or R 104(1)(b) in conjunction with R 85a (see G 3/91). In other words, the remedy of restitutio in integrum is not available to redeem the applicant’s loss of rights that has occurred as a consequence of the failure to pay the designation fee for France at the end of the period of grace under R 85a(2) on 20 December 2000.

The strict provisions of A 122(5) must not be circumvented by the so-called retroactive effect of a correction under R 88(1). The conclusion that the so-called retroactive effect of a correction under R 88 does not set aside the previous procedural effects, but only causes the document corrected to be considered from the time of correction and for future as filed ab initio in the corrected version is already stated in the Board’s decision J 3/01 [10]. Furthermore in decision J 27/96  the Board stated that a correction by the addition of a designation does not mean – despite its ab initio effect – that the applicant is reinstated into the procedural phase where designations can be made and fees paid, meaning that the whole procedure of that phase becomes available to the applicant again. The Legal Board stressed that a correction of a mistake is an isolated procedural measure and not a case of re- establishment into a defined procedural phase as a whole. The same conclusion was reached by the Legal Board in its decision J 21/84 (see also T 152/85).”

In the present case no correction has been granted. Hence the request for correction had no effect whatsoever on the status of the withdrawn parent application.

[5.13] It is not necessary for the Board to decide what the position would have been if the request for correction pertaining to the parent application had been allowed.

[5.14] Contrary to the view taken by the appellant, it is immaterial in this respect whether the withdrawal was intended to apply to a different application, or whether the representative misinterpreted the appellant’s instructions in some other way. The Board cannot see any provision or case law that would support the appellant’s point of view in this respect. Nor did the appellant cite any. A document such as a withdrawal must be construed objectively and its effect cannot vary according to the subjective intentions of its author.

[6] In the absence of a pending parent application, the appellant was not entitled to file a divisional application. The decision under appeal was therefore correct in arriving at this result, and accordingly the appeal must be dismissed.

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J 4/11 – Not Pending Any More

After G 1/09 had issued, there was quite some speculation on whether its verdict could be transferred to the case of deemed withdrawal. Well, here is a decision that sheds light on one such situation.

This appeal was directed against the decision of the Receiving Section (RS) posted to the appellant on 30 September 2010 refusing the request that the application under consideration be treated as a divisional application.

The parent application to the present application was itself filed as a divisional application of a grandparent application which was published on 30 August 2001. These applications are referred as the “present application”, the “parent application” and the “grandparent application”, respectively. Before the date when the parent application was filed, the grandparent application had been deemed to be withdrawn for non-payment of the renewal fee for the fourth year. However, a request for re-establishment of rights had been filed in the grandparent application before the filing date of the parent application. This request was later refused by the Examining Division (ED) – after the filing of the parent application – and an appeal against this refusal was subsequently dismissed.

The RS concluded that the grandparent application was no longer pending when the parent application was filed. This was on the basis that a loss of rights as regards the grandparent application occurred on the expiry of the non-observed time limit and at this point the grandparent application was no longer pending.

The appellant requested the Board to order that the present European patent application be treated as a divisional application. As an auxiliary request, it requestd that the following question be referred to the Enlarged Board of Appeal (EBA):

“In which way should the term “pending” in R 25(1) EPC 1973 (now R 36(1) EPC) be interpreted for the case where the parent application has been deemed to be withdrawn but a request for re-establishment of rights was filed and a relevant appeal was pending at the time of filing of the divisional application?”

The Board did not allow any of these requests.

The headnote sums up its position:

An application which has been deemed to be withdrawn for non-payment of a renewal fee is not pending within the meaning of R 25(1) EPC 1973 in the period for filing a request for re-establishment of rights under A 122 EPC 1973 in respect of such non-payment or in the period after which such an application is filed in the event of such request being refused.

Here is how the Board came to this conclusion:

[2] The question to be decided is whether the parent application was pending when the present application was filed. This in turn depends on whether the grandparent application was still pending when the parent application was filed. The appellant accepts that if the grandparent was not pending at this latter date, then the parent application was never a pending application, in which case the present application cannot be treated as a divisional application and the appeal must fail.

[3] Because of the respective filing dates it was not in dispute that the applicable provisions are those of the EPC 1973. In the following discussion the Board only draws a distinction between the provisions of the EPC 1973 and EPC 2000 where it is necessary to do so.

Initial considerations

[4] R 25(1) EPC 1973 provides that a divisional application may be filed relating to any “pending earlier European application”. The EPC does not define “pending... application” but the appellant accepted that the starting point for the discussion is the statement of the EBA in G 1/09  that for the purposes of R 25(1) EPC 1973 a ‘pending European patent application’ is a “patent application in a status in which substantive rights deriving therefrom under the EPC are (still) in existence.” See point [3.2.4] , emphasis by the EBA. In this context, the EBA also observed (point [3.2.3]) that the requirement of a pending earlier patent application reflects the applicant’s substantive right under A 76 to file a divisional application on an earlier application if the subject matter of the earlier application is “still present” at the time when the divisional application is filed, citing G 1/05 [11.2].

[5] The question is thus whether substantive rights deriving from the grandparent application were still in existence when the parent application was filed. The EBA did not give any definition of the expression “substantive rights” in this context. The Board nevertheless extracts the following points from the EBA’s reasons:

(a)   “Substantive rights” in this context include the provisional protection conferred after publication of the application by virtue of A 67(1), which in turn refers to the protection conferred by A 64. See point [4.2.1]. The combined effect of these two articles is to provisionally confer on an applicant the same rights in the designated Contracting States as would be conferred by a national patent granted in those States. The Board will refer to these rights as the A 64 rights.

(b) The EBA did not expressly say (and did not need to say) whether there might be other relevant types of substantive rights.

(c) A patent application involves two different aspects. On the one hand a patent application is an object of property as set out in A 71 to A 74, conferring on the applicant, inter alia, the provisional A 64 rights. On the other hand it involves procedural rights which the applicant is entitled to exercise by virtue of A 60(3) EPC 1973. The expression “European patent application” may therefore stand for substantive rights as well as for procedural rights of the applicant. See point [3.2.1]. Since R 25(1) EPC 1973 (see now R 36(1)) refers to “any pending patent application” and not to pending proceedings before the EPO, it is not relevant for the purposes of R 25(1) EPC 1973 whether proceedings are pending before the EPO. Pending proceedings cannot be equated with a pending application. See points [3.2.2] and [4.2.5].

(d) A 67(4) provides for the point in time when the A 64 rights must end and thereafter are no longer still in existence. This is when, in the words of A 67(4), the application has “been withdrawn, deemed to be withdrawn or finally refused.”

[6] The EBA also noted (point [3.2.5]) that there are circumstances where an application may be pending but the right to file a divisional application relating to it may be excluded by procedural provisions, as lex specialis. The appellant referred to this point, but it does not help the present Board to decide whether the grandparent application was pending when the parent application was filed because the expressly named exceptions do not apply to the case in hand.

[7] From this starting point the Board will deal with the question which it has to answer in the following stages:

(a) Given that following publication of the grandparent application the substantive rights of the appellant under that application included at least the provisional A 64 rights, what, prima facie, was the effect on these rights of the deemed withdrawal of the grandparent application?

(b) Is the answer to this question affected by either:

(i) the possibility (and indeed the fact) of a request being made under A 122 for re-establishment of rights in the grandparent application following its deemed withdrawal, or

(ii) the possibility of an applicant using R 69 EPC 1973 (see now R 112) to challenge the notice of loss of rights?

(c) If the answers to these questions mean that the A 64 rights were no longer in existence when the parent application was filed, was the appellant entitled to any other substantive rights and, if so, were such rights under the grandparent application still in existence when the parent application was filed?

The prima facie effect of deemed withdrawal on the A 64 rights

[8] A 67(4) provides that a European patent application shall be deemed never to have had the effects set out in A 67(1) and (2) when it has been (a) withdrawn, (b) deemed to be withdrawn or (c) finally refused. The EBA in G 1/09 was concerned with the case of the refusal of an application by the ED: for the purposes of A 67(4), at what point in time is an application to be considered as “finally refused” where no appeal is filed against the decision refusing the application? The Board concluded that this is when the time limit for filing an appeal against a decision refusing the application expires, since it is at this point that the decision to refuse the application becomes final. The retroactive effect of a decision dismissing the appeal does not alter the pending status of the application. See points [4.2.1-2]. Up until this point a substantive right under the application therefore still subsists. This was sufficient to answer the question which had been referred to the EBA.

[9] The present Board is concerned with a different case, namely a deemed withdrawal of an application.

[10] A 67(4) provides that an application is deemed never to have had the effects provided for under A 67(1) and (2) EPC when it is deemed to be withdrawn. The EBA took the position (point [4.2.3]) that A 67(4) is a self contained provision indicating the point in time at which “substantive rights conferred by a European patent application and therefore its pending status must end.” The wider implications of this statement are considered later but so far as concerns the A 64 rights, these rights must therefore have come to an end in the present case when the grandparent was deemed to be withdrawn. Indeed, this is simply what the article says. If it were otherwise there would be no point in giving a person the right under A 122 to file a request to “have his rights re-established.”

[11] As to the point in time when this deemed withdrawal took place, A 86(3) EPC 1973 (see now A 86(1)) simply provides that if the renewal fee (and any additional fee) is not paid in due time, the application shall be deemed to be withdrawn. Although the applicant must be informed of the loss of rights (R 69(1) EPC 1973, see now R 112(1)) the withdrawal takes place at that point in time as a matter of law without any decision of the Office. As explained in G 1/90 [6], in such a case the loss of rights occurs on expiry of the time limit that has not been observed. See also G 4/98 [3.3].

[12] Prima facie, therefore, the A 64 rights under the grandparent application were no longer subsisting when the time for payment of renewal fee expired, which was before the date when parent application was filed.

The effect of the possibility (and the fact) of the filing

of a request to grant re-establishment of rights.

[13] If the Board were to accept the appellant’s arguments, which are based on an analogy with the situation of “final refusal” of an application, it would follow that an application would remain pending after it had been deemed to be withdrawn for as long as the period for making a request to grant re-establishment of rights continued to run. Further, if and when such a request was made, the application would remain pending at least until the date when the request for re-establishment was finally determined.

[14] By way, first, of a general remark, the wording in A 67(4) appears to the Board to have been chosen with care, particular the positioning of the word “finally”. In the case of a refusal of an application, the filing of an appeal will have the effect of suspending the effect of the order refusing the application (A 106(1)). It is logical therefore to speak of the “final” refusal of an application in this context, since the effect of the refusal of the application by the ED is suspended in the event of an appeal. In such a case the suspensive effect of an appeal is ended in the event of a decision dismissing the appeal, from which point the appealed decision retrospectively takes full effect. At the point of dismissal of the appeal, the application can be said to be finally refused and the decision of ED is made final.

[15] On the other hand, in a case where an application is deemed to be withdrawn under A 86(3) EPC 1973 for non-payment of a renewal fee it does not appear to the Board to be logical to speak of the “final” deemed withdrawal of the application. As already noted, the point in time when the application is deemed to be withdrawn is the point when the due time for payment of the renewal fee expires; the loss of rights occurs on the expiry of the time limit that has not been observed and, as such, is final in itself.

[16] The question is then whether, nevertheless, there are any provisions of the EPC which have the effect that the filing of a request for re-establishment of rights provisionally revives a deemed withdrawn application. In other words, does the application thereupon become pending once again? As to this, the filing of a request for re-establishment does not have any suspensive effect equivalent to the suspensive effect under A 106(1) of the filing of an appeal against refusal of an application for a grant. Not only is there no provision in the EPC providing for such equivalent effect but also the nature of an order granting a request for re-establishment is inconsistent with it. The effect of re-establishment is to put the applicant back in the position which he would have been in had the omitted act been performed as it should have been and thus, in accordance with wording of A 122(1), to re-establish the rights which have been lost. The act belatedly performed (for example, as here, the payment of the renewal fee) is then deemed retroactively to have been performed in time so that the application which was deemed to have been withdrawn is deemed not to have been withdrawn (see Singer/Stauder on the European Patent Convention, 3rd (English) edition, Commentary on A 122 at para. 144). This is now stated expressly in A 122(3):

“If the request is granted, the legal consequences of the failure to observe the time limit shall be deemed not to have ensued.”

Although this provision was not in force at the relevant time, the travaux préparatoires to the EPC 2000 give no indication that any change in the law was intended, something which the Board considers would almost be bound to have been the case if this had been the intention. The Board considers this provision to be an accurate statement of the previous position. The effect of filing a request for re-establishment is thus merely to make a reversal of the deemed withdrawal possible. The effect of an unsuccessful request for re-establishment is that the application stays deemed withdrawn.

[17] In G 1/09 the EBA, when dealing with the issue of when an application should be considered to be (finally) refused, referred to and relied on the jurisprudence of Contracting States, pursuant to which

“decisions do not become final until the expiry of the respective period for seeking ordinary means of legal redress.” (See point [4.2.2]).

In effect, the appellant argues that the right to seek re-establishment is a right of redress, so that while the period for seeking such redress against the deemed withdrawal of the application was still running, the deemed withdrawal was not a final withdrawal.

The Board considers that this is not a correct analysis.

First, the argument overlooks the distinction, already discussed, between a refusal, which requires a decision by the Office which is then challengeable by way of an appeal, and a deemed withdrawal, which takes place automatically by operation of law. The above statements by the EBA in G 1/09 were made in the express context of a decision by a department of first instance refusing an application: see point [4.2.2].

Second, the Board considers that the concept of redress is appropriate only in the context of correcting a wrong. Thus while it is appropriate to speak of seeking redress against an allegedly wrong decision of the Office refusing an application, it is not appropriate to speak of seeking redress against the deemed withdrawal of an application. A person requesting re-establishment of rights does not seek correction of a wrong, i.e. allege that the deemed withdrawal was wrong as a matter of law. Rather he requests that he should be excused the consequences of the withdrawal in the particular circumstances of the case. In contrast, the procedure under R 69 EPC 1973 (now R 112) by which a person can challenge a notice of loss of rights (see point 22, below) is a process for seeking ordinary means of legal redress against an alleged wrong of the Office. This conclusion appears to be fully be consistent with the position under French, German and Swiss national law, as summarised in D1, points 4.1 to 4.3.

NB: D1 is an article by N. Bouche et al, “Divisionals and Deemed Withdrawal. A Way out of the Mist?” published in “epi Information” 2/2011, p. 61.

D1 is a follow-up article to D2, an article by D. Visser and M. Blaseby, “Divisionals –  Peering into the Mist” published in “epi Information”, issue 1/2011, p. 32.

[18] The Board also considers that the appellant is wrong in the inference which is sought to be drawn from Consultative Document CA/127/01. This document was drawn up for the Administrative Council when deciding on the amendment of R 25 EPC 1973 in 2001. The relevant passage at point 6 states in full:

“Grant proceedings are pending until the date that the European Patent Bulletin mentions the grant (cf. J 7/96), or until the date that an application is finally refused or (deemed) withdrawn.”

The appellant argues that therefore one can legitimately speak of an application being “finally (deemed) withdrawn.” However, even if the wording in CA/127/01 in this respect might be ambiguous, this part of the document was not specifically addressed to the question of when a deemed withdrawal of an application takes place but was concerned with the pending status of an application in the case of grant (see G 1/09 [4.2.5]).

In any event, the wording of A 67(4) is quite unambiguous in this respect. From the travaux préparatoires containing the successive drafts of what became A 67 it can be seen that the distinction between a (deemed) withdrawal and a final refusal was consistently made. It follows from what is said in points [14] and [15] above, that the Board also considers that such a distinction was made for good reason. The Board would add that in the Notice published by the Office explaining inter alia the changes subsequently made to R 25(1) EPC 1973 (OJ EPO 2002, 112), it was stated that

“An application is pending up to (but not including) the date that... the application is refused, withdrawn or deemed withdrawn; ...”.

[19] The conclusion which the Board has reached also appears to be fully consistent with the opinion of the EBA in G 4/98, where the Board decided inter alia that the deemed withdrawal of a designation of Contracting States takes effect upon expiry of the time limit set out in the relevant articles and rules, and not upon expiry of a grace period. In other words, the existence of a grace period does not defer the effect of the loss of rights to the end of the grace period. The Board said (see point [7.2]):

“The question therefore is whether the deemed withdrawal takes effect upon expiry of the regular time limits or upon expiry of the grace period pursuant to R 85a … R 85a does not prolong the normal time limits, but contains what its name says, namely a grace period, a possibility to remedy an otherwise potentially fatal non-observation of a time limit. The conclusion that the relevant date is not the expiry of the grace period, but the expiry of the normal period was reached in J 4/86 concerning the failure to file a request for examination of a European patent application. The well-reasoned decision is fully convincing and since there are no reasons to distinguish the case at hand from the situation underlying J 4/86, there is nothing more to add. The practice of the EPO (Guidelines for Examination in the EPO, A-III, 12.5, 2nd paragraph) is confirmed.”

[20] The Board therefore considers that the appellant is incorrect in saying that the question is: when was the grandparent application “finally withdrawn”? In doing so, the appellant tries to equate the factual situation of the present case with the factual situation before the EBA in G 1/09 and ignores the fact that here the application was deemed to be withdrawn, not refused.

[21] The Board thus concludes that the mere existence of the right to file a request for re-establishment of rights in a deemed withdrawn application does not mean that the application is still pending while the period for filing such a request is running. For the same reasons, the Board concludes that the fact that a request for re-establishment of rights is actually filed cannot thereupon make the application once again become pending.

The effect of the right of an applicant to challenge the notice of loss of rights.

[22] Although this was not something argued for by the appellant, the Board considers that the above conclusions are not altered by taking into account the procedure by which an applicant can challenge a notice of loss of rights by way of requesting an (appealable) decision (R 69 EPC 1973, now R 112). If the decision in effect confirms the loss of rights, the loss of rights will still have occurred when the relevant time limit expired. There is no mechanism by which the application can have become pending again in the interim period and then become no longer pending. If the Office agrees with the applicant, then the effect of the procedure is that the Office acknowledges that no loss of rights ever occurred; the application will have been pending throughout.

Further processing

[23] The Board is not concerned with the possible effect on the pendency of an application of a request for further processing under A 121. These provisions of the EPC 2000 do not apply to the grandparent application (see point [3], above).

Did the appellant enjoy other substantive rights in the grandparent application

which were (still) subsisting when the parent application was filed?

[24] As to whether the appellant enjoyed any other substantive rights after the grandparent application was deemed to be withdrawn on the expiry of relevant time limit, the appellant argues that (a) the right of the inventor under A 60 and (b) the right to have a request under A 122 for re-establishment of rights considered are both substantive rights within the meaning of G 1/09 which were still subsisting under the grandparent application when the parent application was filed. The Board will consider these in turn together with a further possible candidate for a substantive right, namely the right to file a divisional application itself.

The A 60 right

[25] The substantive right which the appellant relies on is said to be the right under A 60 to a patent, which right belongs to the inventor (or his employer or successor in title) and which, by virtue of A 60(3), the applicant is deemed to be entitled to exercise. The Board will refer to this as the A 60 right.

[26] As the Board understands it, the right which the appellant relies on is in effect, and speaking broadly, the right of an applicant to have its application for the grant of a patent examined in accordance with the EPC and, subject to the application meeting the requirements of the EPC, to have a patent granted.

[27] The Board inclines to the view that A 60 does not confer a substantive right per se, but rather a procedural right, which, once having been exercised, may lead to the conferring of proprietary rights under A 64. This appears to follow from the wording of A 60, which, according to the headline of Chapter II of the EPC, is concerned with who is entitled (or deemed to be entitled) to apply for and obtain a European patent. See also the statement by the EBA in G 1/09 [3.2.1] that:

“... in proceedings before the EPO a European patent application also involves procedural rights which the applicant is entitled to exercise (A 60(3) EPC 1973).” (emphasis added).

[28] The Board acknowledges, however, that it is not always easy to say precisely what constitutes a procedural right and what constitutes a substantive right. As the Legal Board pointed out in J 18/04, procedural rights touch upon substantive rights and drawing a clear separation between the two concepts may be difficult.

[29] In addition, as already noted […], the EBA in G 1/09 said that a patent application is an object of property conferring on the proprietor of the application, inter alia, the provisional A 64 rights. By the use of the words “inter alia”, the EBA appears to have been careful not to say that the substantive rights conferred on such proprietor were restricted to the provisional A 64 rights, although the Board did not say what such other rights might be. In the light of this the Board will assume in the appellant’s favour, but without deciding, that a patent application as an object of property does confer other substantive rights on the inventor, these being rights which the applicant is deemed to be entitled to exercise by virtue of A 60(3). The Board will further assume in the appellant’s favour, but again without deciding, that one such right is the A 60 right which the appellant relies on.

[30] The question is then whether this right was still subsisting when the parent application was filed. In the Board’s view the answer to this question is no. The short reason is that in G 1/09 [4.2.3] the EBA said that A 67(4)

“... is a self-contained provision indicating the point in time at which substantive rights conferred by a European patent application and therefore its pending status must end.” (emphasis added by the Board).

Although this statement was made in the context of the discussion of the continuing subsistence of the A 64 rights, it is perfectly general in its terms. More significantly, if there were in fact other substantive rights which continued to exist beyond this time, it would mean that the application would remain pending while these other rights remained subsisting despite the ending of the A 64 rights. But this would be inconsistent with the EBA’s statement that A 67(4) indicates the point in time at which the pending status of a European patent application must end.

[31] However, the Board will again assume (in the appellant’s favour) that the only substantive rights that the EBA was talking about here were the provisional A 64 rights. See, for example, the unambiguous references to this right in point [4.2.1]. In the appellant’s favour it can also be said that the Board did not expressly consider whether there might be other substantive rights and, further, did not need to consider the point. It was sufficient to have enabled the EBA to reach the conclusion which it did for it to have restricted its consideration to the A 64 rights. This is because the Board found such rights still to be subsisting in the case in question and so on this basis the Board could answer the question referred to it positively. The Board thus did not need to consider the position of other possible rights.

[32] So far as concerns the A 60 right, it is true that there is no provision in the EPC equivalent to A 67(4) setting out expressly when and in what circumstances the A 60 right ceases to exist. However, this is presumably because such a provision is unnecessary. In the case of the A 64 rights, A 67(1) confers only provisional protection. The legislator therefore apparently considered it necessary to spell out what would happen to such provisional protection in the event that no patent was granted on the application, since otherwise the position would (at least arguably) have been uncertain. A 60, on the other hand, does not provisionally confer rights. The A 60 right exists unconditionally as from the moment when the application is filed. As to when such right ceases to exist, the position appears to the Board to be clear: the right ceases to exist if and when the application is finally refused, or is withdrawn or deemed to be withdrawn, as the case may be. At that point the applicant no longer has a right to have his application examined or to have a patent granted. Nor does the possibility of an application being made for re-establishment or the fact of such an application alter this conclusion. The reasoning is the same as in the case of the A 64 rights, dealt with in points [16] to [21], above. The statement by the EBA in G 1/09 that A 67(4) “... is a self-contained provision indicating the point in time at which substantive rights conferred by a European patent application and therefore its pending status must end” appears therefore to be fully applicable.

The right to request re-establishment as a substantive right

[33] The right to have a (final) decision on the request for re-establishment of rights in the grandparent application was clearly still subsisting when the parent application was filed. The Board does not accept, however, that this right was a substantive right as this expression is used by EBA in G 1/09. In this respect the present Board has already referred to the distinction drawn by the EBA in G 1/09 between substantive and procedural rights, and to the EBA’s statement that the fact that there may be pending proceedings in the application does not necessarily mean that the application is pending.

[34] Although drawing a clear separation between procedural rights and substantive rights may be difficult, the right which the appellant relies on is in the Board’s view a purely procedural and not a substantive right in the sense meant by the EBA. This is confirmed by the decision in J 10/93, where the Legal Board was concerned with the transfer of an application after the application had been deemed to be withdrawn. The Board said:

 “[3] First, it is to be taken into consideration that deemed withdrawal of a patent application does not result in a complete and immediate loss of all the applicant’s rights.

Although it is true that the grant procedure as such is terminated by a communication noting the deemed withdrawal (see G 1/90 [5-6]), there still remains a bundle of procedural rights, as e.g. the applicant’s right to apply for a decision under R 69(2) (followed by the possibility to file an appeal having suspensive effect) and his right to avail himself of any of the legal remedies provided for in A 121, A 122, R 85a or R 85b, as the case may be. Thus, following deemed withdrawal, there is a period of time during which the applicant is entitled to make use of his procedural rights referred to above with the aim of having his patent application restored.” (Emphasis added by the Board).

[35] The point was affirmed in J 16/05, where the Board said about a similar point (point 2.1):

“Also, the fact that the application was declared deemed to be withdrawn does not prevent the Board from considering the effect of the transfer. As long as procedural rights remain outstanding, which the applicant is entitled to make use of, a successor to the applicant is entitled to have a transfer registered (see J 10/93 [3]).”

[36] The Board therefore rejects this argument of the appellant.

The right to file a divisional application as a substantive right

[37] Although the appellant did not rely on such a right, the EBA in G 1/09 [3.2.3] referred to the right to file a divisional application relating to an earlier application as being a substantive right arising under the earlier application. The argument that the continued existence of such a right means that the earlier application will still be pending is nevertheless obviously circular in the present context.

[38] The circle can be broken, however, by taking into account the EBA’s qualification to this statement, namely that the right only existed “if the subject matter of the earlier application is “still present” at the time the divisional application is filed”, quoting G 1/05 [3.2.3]. The requirement that the subject matter be “still present” was equated in the next paragraph of the EBA’s reasons with the requirement that, for an application to be pending, substantive rights deriving therefrom must (still) be in existence. The present Board concludes that the right to file a divisional application therefore depends on some other substantive right under the earlier application (still) being in existence at the date of filing of the divisional application. So far as concerns the grandparent application, this condition, for the reasons already given, was not satisfied.

Referral of a question to the EBA

[39] In support of the request for the referral of a question to the EBA, the appellant cited the two articles D1 and D2, and said that they demonstrate that the position is uncertain. This is enough, it was argued, to mean that the question is an important one for the purposes of A 112.

[40] The authors of D2 argue (see page 34, point 3) that although the reasoning in G 1/09 implies that in the case of a deemed withdrawal the pending status ends at the expiry of the non-observed time limit, this is in conflict with the principle endorsed by the EBA of “pendency until expiry of the remedial period” (the authors’ words). Alternatively, the authors argue that because of the similarity between a refusal and a deemed withdrawal it is reasonable to apply to the case of deemed withdrawal the principle endorsed by the EBA that a decision does not become final until the expiry of the period for seeking ordinary means of redress. In D1 and also in Visser, The Annotated EPC, 9th edition (2011), para. 2.1.3 (the author being one of the authors of D1 and D2) it is suggested that it is arguable that an application is still pending in the period during which a request for re-establishment can be filed. In D1, the authors also suggest a way of resolving what they see as the uncertainties arising out of G 1/09.

[41] While the Board treats with due respect the views of academics and practitioners, the Board has been able to reach a conclusion in this case, including the above points discussed in D1 and D2. The existence of doubts expressed in such articles is not in itself enough to make the question, even assuming that it is important, one which should be referred to the EBA. So far as the Board is aware, there are no other decisions of the boards of appeal in which a different conclusion has been reached.

Conclusion

[42] For the above reasons the appeal must be dismissed and the request for referral of a question to the EBA is refused.

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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.

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