G 0010/92 (Divisional application) of 28.4.1994

Summary of the Proceedings

I. In order to ensure uniform application of the law and because of its fundamental importance, in accordance with Article 112(1)(b) EPC, the President of the EPO referred the following point of law to the Enlarged Board of Appeal:

"Until when may an applicant file a divisional application on the pending earlier European patent application?".

II. In his submission the President pointed to two diverging rulings on the same point of law, Technical Board of Appeal 3.2.1's decision T 92/85 of 28 January 1986 (OJ EPO 1986, 352) and Legal Board of Appeal's decision J 11/91 and J 16/91 (consolidated cases) of 5 August 1992 (OJ EPO 1994, 28).

III. In T 92/85 the Board ruled that the Examining Division, in exercising its discretion under Rule 25(1)(a) EPC, may refuse to allow the filing of a divisional application if the communication under Rule 51(4) EPC has already been sent out.

IV. In J 11/91 and J 16/91 it was held that an applicant may still file a divisional application after the approval in accordance with Rule 51(4) EPC.

V. The above decisions were issued under differing versions of Rule 25 EPC.

T 92/85 was issued when the original version of Rule 25 EPC, which distinguished between mandatory and voluntary division, was still in force. This version of Rule 25(1) EPC read as follows:

"(1) A European divisional application may be filed:

(a) at any time after the date of receipt of the earlier European patent application by the European Patent Office, provided that after receipt of the first communication from the Examining Division the divisional application is filed within the period prescribed in that communication or that after that period the Examining Division considers the filing of a divisional application to be justified;

(b) within two months following the limitation at the invitation of the Examining Division of the earlier European patent application if the latter did not meet the requirements of Article 82."

Decision J 11/91 and J 16/91 was handed down under the amended version of Rule 25 EPC, which entered into force on 1 October 1988 (OJ EPO 1988, 290) and which simplified the filing of divisional applications by eliminating the difference between voluntary and mandatory division and by setting a single deadline for the filing of all divisional applications. This version of Rule 25(1) EPC reads as follows:

"(1) Up to the approval of the text, in accordance with Rule 51, paragraph 4, in which the European patent is to be granted, the applicant may file a divisional application on the pending earlier European patent application."

Opinion

1. Wording of Rule 25 EPC

The wording of Rule 25 EPC is clear on the point up to which an applicant may file a divisional application on a pending earlier European patent application. Under Rule 25 EPC the applicant may file a divisional application on the pending earlier European patent application up to the approval of the text, in accordance with Rule 51(4) EPC, in which the European patent is to be granted. The wording of Rule 25 EPC is thus unequivocal on the point of law referred to the Board: the approval by the applicant of the text in which the patent is to be granted marks the point up to which a divisional application may be filed. A divisional application may not be filed after this date.

2. Validity of Rule 25 EPC

In decision J 11/91 and J 16/91, however, the Board takes the view "that Rule 25(1) EPC is incompatible with Article 76 EPC and does not represent the final date by which a divisional application on a pending earlier European patent application must be filed" (see Reasons, 2.3.6). Contrary to the wording of Rule 25 EPC, a divisional application may still be filed up to the date of the decision to grant pursuant to Article 97(2) EPC (see Reasons, 2.6).

3. In the reasons for its decision in J 11/91 and J 16/91 the Board argued essentially as follows:

(a) Article 76(3) EPC cannot be interpreted as authorising the EPO to prohibit the filing of divisional applications at a time when the subject-matter which has been divided out from the parent application is still pending before the EPO. Article 76 EPC provides no basis for setting a time limit, as the Implementing Regulations may deal only with procedural questions and not with matters of substantive law. Rule 25 EPC however is a substantial limitation on the rights of the applicant (see Reasons, 2.3.3 and 2.3.4).

(b) The approval of the text of an application pursuant to Rule 51(4) EPC is not an irreversible event because the case may be reopened by the Examining Division. In this case a divisional application may be filed even after approval has been given. The same is true, for example, if appeal proceedings are started against the refusal to grant a patent (see Reasons, 2.3.5).

(c) The time limit set in Rule 25 EPC is unjustified and unreasonable because it is unnecessary with respect to the needs both of the EPO and applicants (see Reasons, 2.3.3). Under Article 4G of the Paris Convention, conditions can be put on the exercise of the right to divide a patent application, including the setting of a time limit for the filing of a divisional application. Such a limit should not however be arbitrary (see Reasons, 2.3.4).

4. Under Article 76(1) EPC, a European divisional application may be filed in respect of subject-matter which does not extend beyond the content of the earlier application as filed. Provided this condition is met, the divisional application is deemed to have been filed on the date of filing of the earlier application and has the benefit of any right to priority.

Under Article 76(3) EPC, the procedure to be followed in carrying out the provisions of paragraph 1, the special conditions to be complied with by a divisional application and the time limit for paying the filing, search fee and designation fees are laid down in the Implementing Regulations.

Article 76, paragraph 3, EPC contains a general authorisation for laying down the procedure for filing divisional applications, as well as a special authorisation for setting the conditions specifically applying to divisional applications and for laying down the time limit for paying certain fees.

In decision J 11/91 and J 16/91, the Board takes the view that Article 76(3) EPC does not contain an authorisation to set a time limit for filing a divisional application. Article 76(3) EPC distinguishes between conditions to be met by a European divisional application and time limits for paying certain fees.

Setting a specific time limit for the filing of a divisional application is neither a "condition", nor does it fall under the setting of a time limit for the payment of fees. If Rule 25 EPC sets a time limit on the filing of divisional applications, this is not covered by Article 76(3) EPC and therefore has no legal effect.

What decision J 11/91 and J 16/91 overlooks is that Article 76(3) EPC is not only an authorisation for setting the conditions governing divisional applications and time limits for paying fees, but also a general authorisation to lay down the procedure for filing European divisional applications. This general authorisation also allows the Administrative Council to determine the point in time up to which a European divisional application may be submitted. Rule 25 EPC is therefore consistent with Article 76(3) EPC.

This is not altered by the view taken in decision J 11/91 and J 16/91 that the Implementing Regulations may deal only with procedural issues, and not matters of substantive law. Fixing a point in time up to which a divisional application may be filed is clearly a procedural matter. The fact that failure to abide by this procedural provision can deprive an applicant of the possibility of filing a divisional application does not make the procedural provision a substantive provision. Procedural provisions must come equipped with certain sanctions if they are to be effective. Rule 25 EPC sets a deadline for the filing of divisional applications, with the effect that an existing procedural right to file divisional applications lapses with the expiry of this deadline. This sanction is of a procedural nature. The fact that substantive rights can also be affected indirectly by this sanction does not alter the basic procedural character of Rule 25. Article 76(3) EPC shows this very clearly. Imposing conditions for the filing of a divisional application and setting time limits for the payment of certain fees are procedural matters. Failure to comply with these procedural provisions will result in the loss of the divisional application, and this can of course mean the loss of a substantive right, as is the case if fees for a divisional application filed prior to the Rule 25 deadline are not paid.

Rule 25 EPC is thus compatible with Article 76(3) EPC, and the setting of a deadline for filing a European divisional application in Rule 25 cannot therefore be reproached on legal grounds.

5. The point made in decision J 11/91 and J 16/91 that the approval of the text of an application pursuant to Rule 51(4) EPC is not an irreversible event cannot be faulted from the legal point of view. Giving approval is a procedural statement and - like any other procedural statement - may be withdrawn, provided the law allows this. The mere fact that approval can be withdrawn does not however mean that the applicant who withdraws approval then acquires the right to file a divisional application. Nor can the applicant, by withdrawing the approval, alter the fact that it was once given.

6. In arguing that the filing of a divisional application ought in principle to be possible even after the approval in accordance with Rule 51(4) EPC, the Board points out in decision J 11/91 and J 16/91 that divisional applications would in certain cases still be admissible even after approval has been given, such as when the Examining Division reopens the examination procedure or when appeal proceedings are pending.

7. The above cases are not exceptions to Rule 25 EPC, because for Rule 25 EPC to apply it is the applicant's final approval of the proposed text for grant that is decisive. If examination proceedings are reopened by the Examining Division after the approval in accordance with Rule 51(4) EPC, because - for whatever reason - the proposed text for grant is to be amended, Rule 51(4) EPC requires that the applicant once again be informed of the text in which the Examining Division intends to grant the European patent. In this case, for Rule 25 to apply, it is the last approval given by the applicant during proceedings that is decisive. Hence a divisional application may always be filed up until the applicant's final approval in accordance with Rule 51(4) EPC, i.e. until it is clear that the applicant approves the final text proposed by the Examining Division.

8. The same is true of appeal proceedings. The approval in accordance with Rule 51(4) EPC given before the first instance is equally binding on an appeal. If the Board of Appeal then concludes that the patent must be amended prior to grant, the applicant again has to approve the amended text, approval being stated before the Board if the Board is ruling on the issue, or to the Examining Division if the matter has been remitted. In appeal proceedings therefore, it is again the applicant's final approval of the text under Rule 51(4) EPC that is decisive for the application of Rule 25 EPC.

9. It cannot be argued that the deadline for filing a divisional application under Rule 25 EPC does not apply on the grounds that the provision adopted by the legislator is unreasonable because it is unnecessary with respect to the needs of both the EPO and applicants. Decision J 11/91 and J 16/91 fails to appreciate that the legislator has considerable latitude in adopting procedural provisions. Provided the legislator exercises this latitude after due assessment of the particular circumstances, the provision adopted cannot then be set aside merely because an objectively better solution might exist. It is not the task of court rulings to implement the best conceivable solution. A court can only rule that a legal provision is without legal effect if it is in breach of a higher legal principle or is purely arbitrary.

10. Decision J 11/91 and J 16/91 seems to raise the possibility of the legislator having acted arbitrarily in adopting Rule 25 EPC, pointing out that under Article 4G of the Paris Convention time limits within which an applicant must file a divisional application may be set, but that such limits should not be arbitrary (see Reasons, 2.3.4).

The Board sees no support for the contention that the Administrative Council as the competent legislator acted arbitrarily in amending Rule 25 EPC. For a decision to be arbitrary there must be no good reason for it. However, Rule 25 as amended is perfectly reasonable and appropriate. It allows an applicant to file a divisional application up to the approval in accordance with Rule 51(4) EPC. This sets a clear point in time for both the EPO and the applicant which is simpler for both sides than the old provision. It has the additional advantage of allowing applicants to determine this point themselves by giving approval in accordance with Rule 51(4) EPC, meaning that they are no longer - as was previously the case - dependent on the discretion of the Examining Division or on a time limit set in its first communication.

That the point in time selected is appropriate also stems from the fact that the filing of a divisional application necessarily affects the version as filed, because in most cases the parent application has to be amended as a result of the divisional application. If the procedure is to be implemented correctly therefore, it is desirable that, from a certain point in time onwards, the EPO can rely on the proposed text for grant which has been agreed upon by both the applicant and the Examining Division. Here again the obvious choice for a suitable point in time is the applicant's approval of the text for grant.

11. For the above reasons the Enlarged Board therefore holds Rule 25 EPC as amended to be reasonable. It is certainly anything but arbitrary. There are therefore no legal grounds for questioning the validity of Rule 25 EPC.

Conclusion

The question referred is therefore answered as follows:

Under the amended version of Rule 25 EPC in force since 1 October 1988 an applicant may only file a divisional application on the pending earlier European patent application up to the approval in accordance with Rule 51(4) EPC.