As we are all unfortunately aware, in April of this year a change to Rule 36 EPC, which concerns the filing of European divisional applications, came into force. This change resulted in no small headaches for all European patent attorneys in determining exactly the new deadlines for filing European divisional applications. In fact, in its previous version the EPC imposed nothing other than that the “parent” application should be “pending”, but the new version of Rule 36 EPC now specifies a period of 2 years starting from the 1st communication issued by the Examining Division for the “parent” application, with the possibility that this period subsequently begins again for the “parent” application itself or possibly for its divisionals.

This change to Rule 36 EPC means in many cases that it is precisely a European patent attorney who should study the file history of a European application, of a client or of a third party, in order to find out when the events of that file history will cause the deadline for filing a divisional for that application to expire.

To alleviate this burdensome problem, a decision has now been issued by the Enlarged Board of Appeal of the EPO, which if nothing else has at least cleared up the problem of the “pending” status of a European application, a requirement that still remains in Rule 36 EPC.

The decision of the Enlarged Board of Appeal is decision no. G1/09 of September 27th, 2010, with which the Enlarged Board of Appeal has – fortunately! – decided that a European application remains “pending” even after a decision (which may be announced orally, for example at the end of oral proceedings before the Examining Division of the EPO) to refuse the application, up to the last day when an appeal can be filed against the refusal decision, even if no appeal against that refusal decision is actually filed in the end. In fact, although the Enlarged Board of Appeal has acknowledged that the effect of such a refusal decision, if not appealed, begins on the day when the decision was announced, according to the Enlarged Board of Appeal such definitive effect comes into force only on the day after the final deadline for filing the appeal, and not before. This in turn means, according to the Enlarged Board of Appeal, that until the final deadline for filing the appeal the application is still “pending”, since the refusal decision has, at that time, not yet become definitive.

This decision is very positive because, as clearly explained in the decision itself, it means that in a case where a given European patent application is refused by the Examining Division, but where the deadline for filing a divisional expires after the refusal decision, the divisional can be filed – even if no appeal is filed against the refusal decision – in the period for filing the appeal (as long as the deadline for filing the divisionals for that case does not expire beforehand, obviously). For example, for a European application that is refused without oral proceedings but by means of a written decision issued on April 1st, 2011 (the EPO’s date of choice for the coming into force of headache-causing legislative changes, apparently), and with a deadline for filing a divisional fixed for December 1st, 2011, the divisional can be submitted as late as August 10th, 2011.

On the other hand, if the deadline for the divisional is set for July 1st, 2011, then the divisional can be submitted up to July 1st, 2011. The important thing to note is that in neither of these two cases is it necessary to file an appeal against the refusal decision, since in both cases the definitive effect of this decision would come into force only on day following August 11th, 2011. Of course, this decision of the Enlarged Board of Appeal of the EPO does not lighten the burden of determining the deadline for filing any divisionals for any given European case, but at least it removes the need to file an appeal against a refusal decision solely in order to be able to file a divisional after the refusal decision itself is issued, and so it reduces costs for the clients, at least in some cases. In this sense, it seems fair to say that at least the decision G1/09, by directly addressing a legal area – that of divisionals – where the EPO has of late taken steps that are to some extent divorced from the reality of the professional need for clarity and procedural simplicity, is a reasonable decision.

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