EU: Enlarged Board of Appeal decides on the requirements for divisional applications

20 August 2007

Dr Daniela Kinkeldey, Dr Michael Alt

In the decision G 1/06 the Enlarged Board of the European Patent Office (“EPO”) dated 28 June 2007, the EPO ruled on the requirements for divisional applications and the possibilities for amending divisional applications later. The issues underlying the decision were raised by two Boards of Appeal at the EPO which indicated an intention to deviate from the EPO’s long-standing practice for dealing with divisional applications.

This latest decision has therefore been eagerly anticipated as it clarifies a number of issues relating to the formal requirements for handling divisional applications before the EPO.

In particular, in the life sciences field, the breadth of claims usually filed in a parent application in order to get the broadest scope of protection possible can often lead to unity problems – either a priori or a posteriori. Therefore, the tool of filing one or more divisional applications relating to subject matter in a parent application which cannot be maintained therein (for one reason or another) is of great importance and the answers provided by the EPO are significant interest to the life sciences sector.

The questions before the Enlarged Board of Appeal related to the requirements of Article 76(1) EPC which stipulates that a divisional application may be filed only in respect to subject matter which does not extend beyond the content of the parent (earlier) application as filed. Insofar as this provision is complied with, the divisional application shall be deemed to have been filed on the date of filing of the earlier application and shall have the benefit of any right to priority.

Similarly Article 123(2) EPC covers amendments to an application or patent in opposition proceedings and provides that an application or a patent may not be amended in such a way that it contains subject matter which extends beyond the content of the application as originally filed.

The first question that was referred to the Enlarged Board of Appeal was whether a divisional application which was filed containing subject matter, extending beyond the content of the parent application as originally filed (therefore contrary to Articles 76(1) and 123(2)), can be amended after filing and still maintain the filing date of the parent application. The Enlarged Board of Appeal decided that the purpose of Article 76(1) being, in particular, to establish a substantive requirement for the grant of the divisional application, does not justify the conclusion that a divisional application which does not conform to the provision on filing, is invalid. This means that the hitherto existing practice of the EPO in objecting to a divisional application which did not fulfil the requirements of Article 76(1) and giving the applicant a chance to remedy the deficiency, has now been confirmed by the Enlarged Board of Appeal.

The second question and, connected therewith, the third question raised was whether it is still possible to amend a divisional application in order for it to meet the requirements of Article 76(1) EPC when the earlier application is no longer pending and whether are there are any further limitations of substance to the amendment beyond those imposed by Articles 76(1) and 123(2) EPC. In the Enlarged Board of Appeal’s view, according to Article 76(1) EPC, a divisional application is a new application which is separate and independent from the parent application. Consequently, the Enlarged Board of Appeal decided that an amendment to remove added matter not disclosed in the parent application as filed from the divisional application as filed is permissible irrespective of whether the earlier application is still pending or not.

The second set of questions raised was whether there are any specific requirements in the situation in which a divisional application is filed, based on another divisional application, such that the divisional application which is based on another divisional application can only relate to subject matter in the claims of the parent (earlier) divisional application. The Enlarged Board of Appeal held that in the case of a sequence of applications consisting of a root (originating) application followed by divisional applications, each divided from its predecessor, is it a necessary and sufficient condition for a divisional application of that sequence to comply with Article 76(1) EPC that anything disclosed in that divisional application be directly and unambiguously derivable from what is disclosed in each of the preceding applications as filed, i.e. the whole content of the application and not only the claims.

In summary, the Enlarged Board of Appeal has now restored legal certainty with regard to the requirements of filing divisional applications and has essentially confirmed the long-standing practice of the EPO in that:

  1. divisional applications can be amended after filing in order to remedy any deficiencies with regard to added matter compared to the parent application; and

  2. divisional applications, irrespective of whether the parent application itself was a divisional application or not, are subject to the same requirements as any other application and there are no additional limitations for divisional applications provided for in the EPC.

In the recent Dutch patent case between Applera (represented by Bird & Bird) and Stratagene, an Article 76 defence was raised. However, as the Enlarged Board of Appeal’s decision had become available shortly before the hearing, it was invoked by Bird & Bird on behalf of Applera. In one of the first cases in which the Enlarged Board of Appeal's decision has been applied, the District Court of The Hague consequently rejected the Article 76 validity defence in its judgment of 13 July 2007.