New decisions of the Enlarged Board of Appeal (EBA) have restored the previous practice of the European Patent Office (EPO) regarding divisional applications. Decisions G1/05 and G1/06 confirm that divisional applications may be amended after filing to remove any subject matter not disclosed in the parent application. This ends a significant period of doubt which has been plaguing applicants before the EPO.

The European Patent Convention EPC) includes Article 76(1), which insists that for a divisional application to be entitled to the filing date of the parent application the claims cannot extend beyond the disclosure of the parent application.  This is determined in the same manner as the EPO’s 'added subject matter' test (Article 123(2) EPC) which governs all applications, and states that all the of the features in the claim as granted must have basis in the application as originally filed.  Claims in the divisional application then have the dual requirements of basis in the divisional application as filed (to meet Article 123) and basis in the parent application as filed (to meet Article 76).

Traditionally the EPO has accepted that amendments to satisfy these objections can be done any time before grant. So if a divisional application is filed including claims which do not have basis in the parent application the divisional application can still proceed to grant provided any of the additional subject matter is deleted from the claims before grant.

More recently certain Technical Boards of Appeal (which are of lesser authority than the EBA) suggested that this practice might be wrong and that, instead the Articles should be interpreted to mean that any divisional application filed with additional subject matter not contained in the parent is irredeemably invalid and that no amendment could overcome the problem. They then referred related questions to the EBA. The EPO had decided to suspend any cases where this point arises - pending the EBA's decision. This has led to considerable difficulties for EP applicants and to complex filing strategies to avoid the possibility of an application being irredeemably invalid. The situation was discussed in our IP Review of November 2006 - see IP Review Nov2006.pdf.

The EBA considered and answered the following four questions:

1.    Can a divisional application which when filed contains matter extending beyond the content of the parent application be amended later in order to make it valid?

The answer is a categoric "Yes".

2.    Is this still possible if the parent application is already granted or refused?

"Yes"

3.    Are there any further limitations which apply to amendments to divisional applications beyond those of Articles 76 and 123?

"No" - beyond a requirement for a granted divisional not to include matter not disclosed in the parent application, the divisional application will be treated the same as any other application with no further restrictions.

4.    Where a second divisional is filed from a first divisional is it necessary and sufficient to meet Article 76 EPC that the claims in the divisional application find basis in both the earlier divisional and the earlier parent?

"Yes"- the Enlarged Board decided that it is necessary that a divisional of a divisional has basis for all of its subject matter in both the divisional and the parent. There are no further requirements and any subsequent amendment, refusal or acceptance of any of the earlier patent applications is irrelevant to the later divisional.

Fortunately it will now be straightforward to file divisional applications with the claims most desired by the applicant. However, Withers & Rogers continues to recommend that any divisional application also includes all the contents of the original parent application thereby allowing maximum flexibility, both for amendments in a given divisional and in terms of what may be included in any subsequent divisional.

Russell Barton
Nicholas Jones
4 July 2007