NEWS - JULY 2007

EPO:
The long-awaited Enlarged Board of Appeal decision on cases G 1/05 and G1/06 concerning the validity of divisional applications has finally issued on 28 June 2007, largely affirming the existing EPO Examining Division practise concerning divisional applications.

Cases G 1/05 and G1/06 referred a number of questions to the Enlarged Board of Appeal concerning the validity of divisional applications containing, at their actual filing date, subject-matter not contained in their preceding parent applications (see our news article of October 2006).

In their reaching their decision the Enlarged Board of Appeal concluded that:

A divisional application which, at the time of filing, contained subject-matter not contained in its preceding parent application can be amended so as to exclude the added subject-matter.

Such an amendment to remove added matter is allowable irrespective of whether the parent application is still pending or not.

Amendments to a divisional application are allowed to the same extent as amendments of any other non-divisional applications. Therefore, the claims of a divisional application can be directed, by amendment, to aspects of the parent application also disclosed in the divisional application as filed but not encompassed in the claims of the divisional application as filed.

In the case of a sequence of divisional applications, each having been divided out from its predecessor, the subject-matter of each divisional application must have been disclosed in each of the preceding applications as filed, and still be present in each earlier predecessor application (i.e. must not have been unequivocally and definitely abandoned) at the time of filing of the (further) divisional application.

Content which had been omitted on filing a (divisional) application higher up the sequence of divisional applications cannot be re-introduced into that application or in a divisional application lower down the sequence.

It is not necessary for the claims of a divisional application (in a sequence of divisional applications) to be directed to subject-matter within the scope of the claims of its predecessor divisional application(s).

It is possible to file a divisional application which is identical to its parent application, but the principle of prohibition of double-patenting precludes the granting of a divisional application claiming the same subject-matter as that claimed by the parent application.

In practical terms this decision represents a welcome affirmation of the current EPO Examining Division treatment of divisional applications.