J 0024/82 (Divisional application) of 3.8.1984

Summary of Facts and Submissions

I. On 1 August 1978, the appellant filed European patent application 78 100 560.8 (hereinafter referred to as the "parent application"). The parent application was published on 7 March 1979 under number 00 000 877.

II. During the examination procedure in respect of the parent application the Examining Division, in a communication dated 22 August 1979, objected that the claims did not comply with Article 82 EPC since they referred to several groups of inventions which lack unity. It was further noted in the communication that divisional applications could be filed within two months once the relevant inventions had been excised.

III. By letter dated 17 April 1980, the appellant filed new claims delimiting his invention against the state of the art revealed in the search report: a new set of claims for the parent application and a second set for dividing out. He also said that he would be submitting a further set of inventions for dividing out. Since these had yet to be delimited against prior art that had meantime come to light he asked for more time to divide them out and requested a hearing, reserving the right to supplement or amend the claims.

IV. Following a communication from the Formalities Officer dated 4 June 1980 to the effect that a European divisional application could be filed for this additional set up to 21 June 1980 the applicant stated in a letter dated 18 July 1980 that he had not made a limitation but merely a proposal for consideration.

V. A further examiner's communication of 19 November 1980 held the new set of claims for the parent application to be allowable in principle and requested the correction of certain deficiencies. It furthermore noted that no final limitation had yet been made. As a result, the period laid down in Rule 25(1) (b) EPC had not yet begun, but neither had the application satisfied the requirement of unity. The appellant was given four months to establish unity in a clear and unconditional statement of the subject-matter to which the application was limited. The period pursuant to Rule 25(1) (b) EPC would begin to run from the date on which this statement was filed.

VI. The hearing requested took place on 19, 20 and 21 January 1981; the parent application was discussed in detail and the divisional application "in general".

VII. Subsequently, new documents relating to the parent application were filed under cover of a letter dated 19 March 1981, received on 21 March 1981. It was stated that the drawings were "merely a draft" which would be finalised if the Examining Division agreed. The subjects of former Figs. 15-30 were part of the "subject-matter divided out","no longer subject-matter of the present application" and "to be pursued separately as appropriate". The appellant concluded as follows: "Any other amendments required by the Examining Division should be entered on a copy of the documents filed so that the applicant can finalise the documents at the earliest opportunity".

VIII. Under cover of a letter dated 15 September 1981, the applicant filed new documents for the parent application which he considered "would enable it to proceed to grant". Having filed these "clear documents limited to the parts of the application which the Examining Division regards as satisfying the requirement of unity", he could now "file the divisional application which he wanted pursued, within the stipulated time limit of two months after filing the above-mentioned limited documents".

IX. On 26 and 27 October and 13 November 1981, the applicant filed three applications designated as divisional applications and relating to subject-matter divided out from the parent application.

X. On 7 April 1982, the Receiving Section sent the appellant a communication pursuant to Rule 69(1) EPC stating that none of the three divisional applications "had been filed within two months following the limitation of the earlier application at the invitation of the Examining Division (Rule 25(1)(b) EPC), as the limitation has been made on 19 March 1981". It was therefore noted pursuant to Rule 69(1) that the divisional application was deemed not to have been filed on the filing date of the earlier European patent application and could not enjoy its priority.

XI. The appellant objected to this finding and applied for a decision pursuant to Rule 69(2) EPC. In three decisions, identically worded and containing all the application numbers, the Receiving Section found on 1 July 1982 that the three divisional applications could not be accorded the date of filing of the parent application. The reasons given were essentially that in making the submissions in the examination proceedings in respect of the parent application, dated 19 March 1981 and received on 21 March 1981, together with the enclosed documents for the parent application, the appellant was considered to have made a final limitation in accordance with Rule 25 (1)(b) EPC. The two-month time limit stipulated in that Rule for the filing of divisional applications thus expired on 21 May 1981 and it was not possible to treat the three applications as divisional applications under Article 76 EPC.

XII. Separate appeals dated 15 July 1982 in respect of each of the three divisional applications, together with a cheque for the fees, were received on 22 July 1982. A Statement of Grounds was filed on the same date.

XIII. In the written procedure and in the oral proceedings of 4 July 1984, the appellant's principal submissions were as follows: in a communication from the Examining Division of 19 November 1980, the appellant had been invited to establish a "clear and unconditional" limitation of the parent application. His submission of 19 May 1981 could be considered neither "clear" nor "unconditional". The appellant had explicitly stated that he did not want to submit final documents in respect of the parent application until the Examining Division had indicated the changes it required. Furthermore, he had previously stated in his letter of 21 June 1980 (IV above) that he wished to delay filing divisional applications until he knew the final form of the parent application, and had restated this in the submission of 19 May 1981. Furthermore, he had thought that a limitation was an amendment within the meaning of Rule 86(3) EPC and therefore required approval by the Examining Division.

XIV. The appellant agreed to consolidation of proceedings on the three appeals in accordance with Article 9(2) of the Rules of Procedure of the Boards of Appeal (OJ 1/1983, p. 7). The Board accordingly consolidated proceedings, and the Chairman so informed the appellant in a communication dated 16 April 1984.

XV. The appellant requests that the impugned decision be set aside and the divisional applications accorded the filing date of the parent application. In the alternative, he requests that the Enlarged Board of Appeal be asked to consider the question whether limitation within the meaning of Rule 25(1)(b) is constituted by a mere "proposal for a limited claim" rather than "a version of the claim agreed between the Examining Division and the applicant as being ready to proceed to grant".

Reasons for the Decision

1. The appeals comply with Articles 106 to 108 and Rule 64 EPC and are, therefore, admissible.

2. A limitation within the meaning of Rule 25(1)(b) EPC exists when the applicant submits with new documents for the parent application a letter which in view of its objective content constitutes an unconditional response to the invitation to establish unity. In determining whether a letter from the applicant is to be interpreted as a limitation within the meaning of Rule 25(1)(b), the objective content of the letter is decisive. However, the content of the letter is not to be interpreted in isolation but in the context of earlier communications by the Examining Division and letters from the applicant.

3.The Receiving Section regarded the letter of the applicant and present appellant dated 19 March 1981, received on 21 March 1981, together with enclosures as a limitation within the meaning of Rule 25(1)(b) EPC, a conclusion possible if the letter is considered in isolation. The points made in that letter appear to refer to the formulation of the parent application in its various details, particularly the drawings. The limitation of the parent application appears unconditional if the content of this letter is considered by itself.

4. However, this view can no longer be upheld if the previous letters from the applicant dated 17 April and 18 July 1980, together with the communication issued subsequently by the Examining Division on 19 November 1980, are also considered. In the first letter, the applicant stated that he merely wished to prepare provisional documents for the parent and divisional applications. The filing of divisional applications was to be postponed because he wished to retain the possibility of making further amendments to the documents. In the second letter, he pointed out that he was not establishing a limitation but merely making a suggestion to that effect which should be considered by the Examining Division. The Examining Division responded with a communication dated 19 November 1980 in which it noted that no clear and unconditional limitation had yet been received and invited the applicant to "make a clear and unconditional statement within the time limit stipulated, defining the subject-matter to which he wished to limit the present application in order to establish unity".

5. If one considers the provisos made by the applicant and the Examining Division's invitation to remove them by a "clear and unconditional statement", the letter of 19 March 1981 can no longer be regarded as an unconditional limitation. In the Board's opinion, the content of that letter does not constitute an unconditional statement. The wording in the letter to the effect that" ... the subjects of former Figs. 15-30 are to be pursued separately as appropriate" can, if the case history is ignored, be taken to imply an unconditional limitation of the parent application by the applicant, who at that stage was merely considering whether to file divisional applications for the excised subject-matter. However the Examining Division, to which that statement was addressed, knew from the case history i.e. the extensive correspondence, telephone calls and the hearing which took place on 19, 20 and 21 January 1981, that the applicant had the firm intention of filing divisional applications but wished to defer filing until the Examining Division finally approved the newly filed documents. In these circumstances, the Examining Division could not at that stage take the letter of 19 March 1981 as the unconditional statement which it had requested.

6. The unconditional statement arrived by letter dated 15 September 1981, received on the same date, and only then did the two-month period for the filing of divisional applications begin to run. The divisional applications filed on 26 and 27 October and 13 November 1981 were therefore filed in time.

ORDER

For these reasons, it is decided that:

1. The decisions of the Receiving Section of the European Patent Office dated 1 July 1982 concerning European patent applications Nos. 81 108 902.8, 81 108 994.5 and 81 109 672.6 are set aside.

2. The above European patent applications were filed within the period laid down in Rule 25(1)(b) EPC.