Right to file a divisional EP patent application, suspensive effect of the appeal J28/03
15.11.2006
The Board pointed out that the term "suspensive effect" does not mean the immediate cancellation of the objected decision. The suspensive effect means that the consequences resulting from an objected decision do not occur immediately after the delivery of the decision, but that each article is frozen until the Board has definitively dealt with the appeal.
The factsA European patent application n° 99 911 255 is filed as an international patent application under the PCT on 08/03/1999.This application enters the European national phase on 24/08/2000.On 15/05/2002, the EPO informs the applicant that the mention of the grant of the patent will be published in the European Patent Bulletin 02/826 of 26/05/2002.On 25/07/2002 an appeal is filed by the applicant against the decision dated 15/05/2002 in respect of the grant of the patent, the appeal fee is paid, but the appeal is refused as inadmissible on 16/07/2003 (T 1187/02), as the notice of appeal was not filed in due time.On 22/08/2002, the European patent application 02 018 257 is filed as a divisional application, on the basis of the above-mentioned international application.On 11/12/2002, the EPO informs the applicant that the application 02 018 257 cannot be considered as a divisional application, since at the filing date, the mention of the grant of the parent patent was already registered in the European Patent Register (Rule 25(1) EPC).By letter of 12/02/2003, the applicant applies for a definite decision by way of rule 69(2) EPC. He pointed out that at the time of filing of the divisional application, the parent application was still pendant because of the appeal T 1187/02 and of its suspensive effect.Yet, according to the EPO communiqué dated 09/10/2002, a divisional application can only be filed if the parent application is pendant, i.e. the date at which the mention of the grant of the European patent grant is published in the European Patent Register, or until the date at which the application is refused.If an appeal is formed against a refusal decision, it is still possible to file a divisional application during the appeal.Yet, here, the receiving section deemed that Article 107 EPC was not applicable, because the applicant had given his agreement on the text, he was not prejudiced by the decision to grant the patent.Thus the appeal could not produce a suspensive effect within the meaning of Article 106(1) EPC.The applicant forms an appeal against this decision on 23/08/2003.
Grounds for the decisionSince the decision to grant the patent was favorable and complied with the applicant's request, the exception mentioned in the EPO communiqué in respect of the modification of rules 25(1), 29(2) and 51 EPC cannot apply in view of the lack of refusal against which an appeal would be open.The appeal formed against the decision to grant the patent cannot benefit from the particular suspensive effect attached to an appeal against the refusal of a patent application.The Board pointed out that the term "suspensive effect" does not mean the immediate cancellation of the objected decision. The suspensive effect means that the consequences resulting from an objected decision do not occur immediately after the delivery of the decision, but that each article is frozen until the Board has definitively dealt with the appeal. The appeal is thus refused.It can be noted that, concerning the divisional applications, several questions are pendant before the Enlarged Board of Appeal :-G3/06 : can a granted European patent based on a divisional application which, at its filing date, would extend beyond the earlier application (Art 76(1) EPC) be amended during opposition proceedings to overcome an objection according to Article 100(c) EPC ?-G1/06 : about the sequences of the divisional applications : when several divisional applications are filed in sequence, to comply with Article 76 (1) EPC, is it necessary that the content of each divisional application can be directly deducted, without ambiguity and separately from the content of each one of the earlier divisional applications ?-G1/05 : can a divisional application which, at its filing date, does not comply with Article 76 (1) EPC, be subsequently amended in the proceedings, to render this divisional decision valid ? If the answer is yes, what are the conditions ? (the initial application being pendant, there are other possible limitations).
