IP Report
Patent Law

Filing of divisional patent applications after publication of the mention ofthe grant under the European Patent Convention
Decision J 01/24 of the Legal Board of Appeal of the European Patent
Office dated April 16, 2024
Reported by Dr. Niels Malkomes and Dr. Georg Anetsberger
Like J 28/03, J 01/24 deals with
the question whether a European
patent application is still "pending"
after filing an appeal against thedecision to grant the respective
patent even though the mention ofthe grant has already been published. With its decision J 01/24
dated April 16, 2024, the Legal
Board of Appeal of the European
Patent Office (EPO) departed fromthe principle stated in J 28/03 thatthe answer to the question whether
the patent application was still“pending” depended on the outcome of the appeal. Instead, thedecision J 01/24 assessed whether
substantive rights (e.g., provisionalprotection) still derive from thepatent application. This was thecase as, according to the current
common practice of the EPO, theappeal of the applicant against thegrant of the patent was treated asvalidly filed, with the consequencethat the mention of the grant wasdeleted. Decision J 01/24 thus provides applicants which have overlooked to file a European divisional
application before the publicationof the mention of the grant of theparent application with a workaround to cure said deficiency byfiling an appeal against the decision to grant and subsequently
filing the divisional application.

1. Summary of Facts and Submissions
Decision J 01/24 concerns the admissibility of filing a divisional European patentapplication after the publication of themention of the grant of the earlier application.
The appeal is directed against the interlocutory decision of the Receiving Section
dated 14 September 2023 that the later
application will not be treated as a divisional application of the earlier application. The Receiving Section allowed aseparate appeal against the decision underArticle 106(2) EPC.

Dr. Niels Malkomes
German and European Patent
Attorney, UPC Representative,
PartnerDr. Georg Anetsberger
German and European Patent
Attorney, UPC Representative,
Partner

A decision to grant was issued for the earlier
application on 18 February 2021, setting an
original date of publication of the mention ofthe grant as 17 March 2021.
On April 16, 2021, the applicant filed a noticeof appeal against the decision to grant theearlier application and paid the appeal fee.
BARDEHLE PAGENBERG

By a brief communication dated May 6, 2021,
the Examining Division that was responsible
for the earlier application informed the applicant that the decision to grant maintained its
effect and remained valid, but that the dateof publication of the mention of the grant had
been deleted.

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Patentanwälte Rechtsanwälte
Prinzregentenplatz 781675 München
T +49.(0)89.928 05-0
F +49.(0)89.928 05-444
info@bardehle.de

On May 24, 2021, the request for grant of adivisional application based on the earlier
application was filed.

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On June 18, 2021, the applicant filed thegrounds of appeal.
In response to a status enquiry, theReceiving Section issued a brief communication informing the applicant that thestatus of the later application depended on
the outcome of the appeal filed in respect tothe earlier application.
On April 7, 2022, the applicant withdrew
its appeal against the decision to grant theearlier application.
On May 18, 2022, the Receiving Section
issued a noting of loss of rights pursuant
to Rule 112(1) EPC. The Receiving Section found the later application could not
be processed as a divisional application.
With reference to the decision of the Legal
Board of Appeal in J 28/03, the Receiving
Section noted that the appeal against
the decision to grant in respect of theearlier application had been withdrawn.
The decision to grant the parent patent
had therefore been upheld. Accordingly,a divisional application could only havebeen validly filed until the day before thepublication of the mention of the grant(March 16, 2021).
On June 2, 2022, the Examining Division issued a communication advising theapplicant of the new publication date of themention of the grant in respect of the earlier
application, namely 15 June 2022. This communication noted that the original decision
to grant dated 18 February 2021 maintained
its effect and remained valid.
On July 15, 2022, the applicant requested
a decision under Rule 112(2) EPC andmade submissions in support of theproposition that the later application had
been validly filed as a divisional application.
In its interlocutory decision dated
September 14, 2023, the Receiving Section
ruled that the later application will not betreated as a divisional application of theearlier application and allowed a separate
appeal against said decision.
On November 14, 2023, the appellant
filed a notice of appeal and paid theappeal fee.
a. The arguments of the appealed decision of the Receiving Section
The Receiving Section argued thatthe principles of decision J 28/03
were applicable to the present case. InJ 28/03, the Legal Board of Appeal drewa distinction between appeals against
refusals of a European patent application
and appeals against decisions to grant aEuropean patent. As regards the former,
there was a “guarantee” that a divisional
application can survive even where theappeal was refused for whatever reason(Reasons 15). The latter was different,
as a patent had already been granted,
with the consequence that every furtheraction was completely dependent on
the outcome of the appeal proceedings(Reasons 16).
Moreover, the suspensive effect of anappeal did not allow to ignore the existence of an already taken decision. It
only interrupted the normally following
further steps until the definite decision of the last instance has been taken(Reasons 18).

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Patent Lawb. The appeal against the decision ofthe Receiving Section
In the statement of grounds of appeal filed on
January 15, 2024, the appellant argued thatthe principles established in J 28/03 were
not applicable to the present case, and they
were not convergent with the later decision
G 01/09. In the present case, the original
date of the mention of the grant had beendeleted, and the parent application remained
therefore pending. The situation in J 28/03
was different, as there was no deletion of themention of the grant for the parent application. Therefore, the principles of this decision
should not be applied to the present case,rather the principles set out in G 01/09 wereapplicable.
By letter dated July 15, 2022, the appellant
argued that other divisional applications
were filed under the same circumstances as
the present and were allowed by the EPO sothat the appellant had legitimate expectations that in the present case the divisional
application could also be validly filed.
The applicant requested that the decision
under appeal be set aside and that the later
application be processed as a European
divisional application. In the event that thisrequest was rejected, oral proceedings wererequested.
2. The Appeal Proceedings (J 01/24)
and the Reasons for the Decision
The Legal Board of Appeal consideredthat the appeal (against the decision of theReceiving section) is admissible, in particular as a separate appeal has been allowedin the decision under appeal pursuant toArticle 106(2) EPC.

When is an application pending?
The Legal Board of Appeal assessed the question when an earlier application is “pending”,
as required as prerequisite in Rule 36(1) EPC
for filing a divisional application.
The EPC does not contain a definition
thereof, so that the Legal Board of Appeal
referred to the principle laid down in thedecision G 01/09 of the Enlarged Boardof Appeal: A “pending (earlier) European
patent application” is a patent application ina status in which substantive rights deriving
therefrom under the EPC are (still) in existence (G 01/09, Reasons 3.2.4.). The substantive rights include provisional protection
under Article 67 EPC.
The Legal Board of Appeal moreover
emphasized that the retroactive effect of a
final decision to refuse an application on therights conferred upon the applicant does not
influence the pending status of the application before such a decision is final.
Based on the fact that in the present case(unlike in the case underlying J 28/03)
the deletion of the date of the mention of
the grant prevented the grant of the patent
from becoming effective, the Legal Boardof Appeal thus concluded that substantive
rights (e.g. provisional protection) still derivefrom the earlier patent application which wastherefore still pending.
The Legal Board of Appeal insofar did not
follow the position of the board in J 28/03
that “an appeal against a decision granting
a patent and resulting in the publication of the grant of the patent would beexpected to be inadmissible with respect toArticle 107(1) EPC and should therefore not3

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benefit of the possibility to file a divisional
application even during the appeal procedure. This can also be understood as to
avoid abusive appeals to construe artificially pending 'parent applications'.”.

Such an appeal is in contrast to a “clearlyinadmissible” appeal that should haveno suspensive effect, such as an appeal
without basis in the EPC, e.g. an appeal
filed by a third party (cf. Reasons 10.5).

According to J 01/24, it is the current
practice of the EPO that appeals against
the grant of a patent are treated as appeals
validly filed, with the consequence thatthe date of the mention of the grant isdeleted. If the appeal is later withdrawn orturns out to fail, there will be a new dateof publication of the mention of the grant.
J 01/24 considers that this is a requirement
for the effectiveness of the grant of a patent(Article 64(1) EPC).

A “pending application” in particular does
not require “pending grant proceedings”, cf.
also G 01/09, Reasons 4.2.5. This is also inline with the principle that in case of a stay ofthe proceedings pursuant to Rule 14(1) EPC
there are no pending grant proceedings eventhough the application is still pending.

Decision J 01/24 moreover emphasizes
that the EPC has no provision restricting
appeals of the applicant against the grantof a patent and that “such an appeal cannot
therefore be seen as clearly inadmissible”.

Order
Consequently, the Legal Board of Appeal
ordered that the decision under appeal beset aside and that the case be remitted to theReceiving Section for further prosecution
with the order to treat the later application
as a divisional application of the earlier
application.

3. Remarks

The landmark decision G 01/09 alreadyprovided clarity for applicants in that adivisional application may be filed as long as
the decision to refuse the application has not
become final, i.e. within the time limit forfiling an appeal.
The present decision J 01/24 now provides
clarity for the different case where themention of the grant of an application has
been published and the applicant thereafter
files an appeal against the decision to grantwithin the time limit for filing an appeal. In
such a case, a divisional application can still
be filed as, according to the common practiceof the EPO, the mention of the grant isdeleted, and the application is consequentlystill pending.
The decision does not change the fact thatthe vast majority of such appeals will fail,as the decision to grant is (usually) fully inline with the intention to grant to which theapplicant agreed. In contrast to the proceedings for example before the German Patentand Trademark Office, this applies even if thegrant is based on an auxiliary request, as theapplicant necessarily withdraws the higher
ranked requests when agreeing to the intention to grant based on an auxiliary request.

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However, the decision J 01/24 distinguishes
between “not clearly inadmissible” appeals(filed by the applicant) and “clearly inadmissible” appeals (for instance, an appeal filed
by a third party). From a practical pointof view, this seems to be reasonable, as an
appeal of the applicant against the decision
to grant might in principle also be admissible according to the standard applied in
J 28/03 – even though this should only apply
in rare cases.
As a justification of the current practice ofthe EPO to treat appeals against the grant ofa patent as validly filed, J 01/24 points outthat it is inconsistent to consider an appeal
in two different ways: first for the mentionof the grant to be deleted, the appeal only
needs to be admissible; and second whether
the suspensive effect applies is dependent
on the outcome of the appeal. If this inconsistent approach were to be adopted, thesituation would be uncertain and unclear
especially for third parties, that could
not know whether a patent application isstill pending, as this would depend on theoutcome of the appeal proceedings. J 01/24
insofar also refers to the requirement for
the effectiveness of the grant of a patent(Article 64(1) EPC) (Reasons 10.5).
It certainly remains best practice to filedivisional applications before the publication of the mention of the grant to avoid all
the above issues. Opening the door to filinga divisional by filing an appeal against thedecision to grant should only be used as a
backup, which may prove extremely valuable in case the timely filing of the divisional
was overlooked. Oblivious applicants should
however keep their fingers crossed that theEPO does not change the current practiceof treating appeals of the applicant against
the grant of a patent as validly filed, with theconsequence that the mention of the grant isdeleted.

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