EPO Enlarged Board of Appeal (EBoA) clarifies when a European patent application is “pending”

September 30, 2010

It has been the established jurisprudence of the EPO that a European patent application is pending up to but not including the date on which the mention of the grant is published, or until the application is withdrawn, deemed to be withdrawn or refused.

The status of an application as being pending or not is of decisive importance in relation to the filing of divisional applications. A divisional application can only be filed relating to a pending earlier application.

In order to be able to file a divisional application following an unforeseen refusal of the parent application (e.g. during oral proceedings), applicants have been required to file a notice of appeal against the decision to refuse, to make the refused application “pending again”. Alternatively, applicants have filed “placeholder divisionals” just before attending oral proceedings to avoid the need for such formal appeal.

Following a referral in J 2/08, the EBoA has now in a decision dated 27 September 2010 clarified when a European patent application is pending. The EBoA concludes that a “pending European patent application” is an application in a status in which substantive rights deriving therefrom under the EPC are still in existence. Such substantive rights include the provisional protection conferred by the European patent application after publication. Under the EPC, these substantive rights shall be deemed never to have had the effects of provisional protection when the application has been “finally refused”. The EBoA points out that substantive rights continue to exist after refusal until the decision to refuse becomes final, in the sense that third parties using the invention before the decision to refuse has become final incur the risk of becoming liable under national law.

The EBoA therefore concludes that under the EPC a patent application which has been refused by the Examining Division is thereafter still pending, for the purposes of filing divisional applications, until the expiry of the period for filing an appeal and, on the day after, is no longer pending if no appeal is filed. The same conclusion applies both to the former and current versions of the regulations relating to the filing of divisional applications.

In an obiter dictum, the EBoA confirms the established jurisprudence concerning pendency in connection with grant of the patent. Based on the same reasoning as above, that a European patent application is pending when substantive rights can be derived therefrom, the EBoA reminds that any such rights will cease upon grant of the patent. The substantive rights are then no longer derived from the patent application, but now derive from the granted patent.

Applicants can be relieved that they no longer need to file appeals for the sole purpose of making a refused application “pending again” such that a divisional application can be filed.
Mattias Pierrou

European Patent Attorney