J 0013/84 (Divisional application) of 16.11.1984

Summary of Facts and Submissions

I. European patent application No. 81 400 783.7 was filed on 19 May 1981 claiming a priority of 19 May 1980.

II. In a communication dated 22 February 1983, referring to Article 96 (2) and Rule 51 (2) EPC, the Examining Division set out the following objections: "4 - Inventive step (a) with respect to the subject-matter of the application benefiting from the priority date ... a slight anti-inflammatory action on the part of the compounds referred to in the present application on which the applicant appears to base the inventive step cannot be taken into consideration at the present time... (b) Lack of unity of the intermediates If the applicant succeeds in removing objection 4 (a), the intermediates ... according to claims 19 and 20 (not the intermediates ... according to claim 21 which would then have to be deleted or whose content could constitute the subject -matter of a divisional application) could be considered as forming a unity with the final products ...". The applicant was given a period of four months in which to reply to these observations.

III. In a reply dated 6 June 1983 the applicant endeavoured to demonstrate the contested inventive step, noted the acceptance in principle of his claims 19 and 20 and deleted claim 21. He added however: "in accordance with the examiner's suggestion, we are filing a divisional application for the intermediate products . .. and for their method of preparation". By letter dated 26 August 1983 he confirmed his intention as follows: " ... pursuant to Article 76 and Rule 25 (1) (a) EPC we are filing a divisional application for the intermediate products ..."

IV. In fact the divisional application, with the former claim 21 as its subject -matter, was not duly filed until 31 August 1983. It was given the number 83 201 252.0.

V. By communication of 11 October 1983 pursuant to Rule 69 (1) EPC, the Receiving Section found that since the divisional application had not been filed within the two-month period prescribed by Rule 25 (1)(b), i.e. "within two months following limitation at the invitation of the Examining Division of the earlier ... application", it could not be deemed to have the same date of filing as the parent application.

VI. On 2 November 1983 the applicant applied for a decision against this finding under Rule 69(2) EPC. On 17 January 1984 the Receiving Section confirmed its opinion that the divisional application could not have the benefit of the date of priority of the earlier application. It considered that the aforementioned point 4(b) of the communication dated 22 February 1983 was not simply a suggestion to the applicant but placed an actual obligation on him to amend the claims within the period prescribed and where appropriate, to submit a divisional application, in accordance with the requirements of Rule 25(1)(b), to be able to benefit from any date of priority enjoyed by the parent application. The Receiving Section felt moreover that the applicant was incorrect in invoking the provisions of Rule 25(1)(a) to support the admissibility of a divisional application filed at any time, i.e. disregarding the period; by 31 August 1983 claim 21 had already been divided out from the earlier application, thus ceasing to exist, and could not therefore be converted into a divisional application.

VII. The applicant filed an appeal against this decision in due time and in the prescribed form.

VIII. In support of this appeal the applicant's main argument was that, as a result of the ambiguity in wording, point 4(b) of the communication dated 22 February 1983 could not have been taken to be an "invitation" on the part of the Examining Division to proceed to a divisional application. He had therefore considered that he could legitimately take advantage of Rule 25(1)(a) which gave him the opportunity to file a divisional application "at any time", since he had not been called upon to do so by "invitation" within the meaning of Rule 25(1)(b) and in view of the fact that as of 31 August 1983 he had not received the communication provided for by Rule 51(4). He also maintained that on the date of filing of his divisional application claim 21 had not yet been definitively deleted from the earlier application, since withdrawal had been filed only on condition that a divisional application be filed.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.

2. Since the issue is that of admissibility of a divisional application per se, i.e. with the priority of the parent application, it is necessary to establish whether the divisional application had to be filed under Rule 25(1)(b), as was the view of the Receiving Section, i.e. within two months following the limitation at the invitation of the Examining Division of the earlier ... application" or, as was maintained by the applicant, under Rule 25(1)(a). In the latter case the application may be filed "at any time after the date of receipt of the earlier ... application by the European Patent Office" subject to the conditions indicated by that Rule.

3. The applicant's main contention is that the communication sent to him on 22 February 1983 did not constitute an actual "invitation" within the meaning of Rule 25(1)(b) and that it could not therefore trigger the period of two months following the amendment for a divisional application to be admissible.

4. This argument must first be looked at from the point of view of common sense and the accepted meaning of words used. The French word "requête" (rendered in the German and English versions of Rule 25 respectively as "Aufforderung" and "invitation") in common parlance means an earnest request or plea ("une demande ou prière instante": Littré) and in a legal context entails either referral to a legal instance or other consequences. A request should not normally be formulated in the conditional tense, and particularly not as an incidental proposal placed in parenthesis. The wording used in the communication in suit was such as to engender at least an ambiguity in the mind of the addressee. That was all the more regrettable since a clear reference to Rule 25(1)(b) could easily have removed any doubt.

5. It is significant that in order to explain that the communication of 22 February 1983 did indeed constitute an "invitation" within the meaning of Rule 25(1)(b), the Receiving Section had to resort to 22 lines of typescript and quote from a grammar book. Furthermore the Receiving Section's reasoning is less than convincing since the key words in alleged invitation ("... claim 21 which would... have to be deleted or whose subject-matter could constitute the subject-matter of a divisional application") are in the conditional, thereby considerably lessening the obligatory nature it was claimed to have by the Receiving Section in the contested decision.

6. All EPO departments called upon to use three official languages (Article 14 EPC) should be required in all cases to use clear and, if possible, simple and concise language. This applies still more than in the case of national bodies normally using only one language. An added reason is that patent applicants do not necessarily have the language of the proceedings as their mother tongue and furthermore under Article 14(2) are allowed to file their application in a language other than German, English or French.

7. In the case at issue it was not made clear that the Examining Division was inviting the applicant in the forceful sense (i.e. with the legal consequences, flowing from that invitation) to file a divisional application, particularly with respect to the period allowed. An invitation to an applicant to limit his earlier application in accordance with Rule 25(1)(b)must of necessity, to produce its full effect, be formulated in clear and unambiguous terms. As this was not the case here, the divisional application of 31 August 1983 must be considered admissible, leaving aside the particular requirements of Rule 25(1)(b).

8. Rule 25(1)(a) lays down two alternative conditions for the admissibility of a divisional application: - observance of the period prescribed in the Examining Division's first communication; - agreement by the said Division, which must consider "the filing of a divisional application to be justified".

9. It is clear that the divisional application of 31 August 1983 was filed after expiry of the period of four months prescribed on 22 February 1983. But since the divisional application had been at least "suggested" by the Examining Division itself, if not filed at its invitation, the applicant had grounds for thinking that the Division considered it to be justified. One of the two conditions set by Rule 25(1)(a) was therefore met and the divisional application could be validly filed on 31 August 1983.

10. In contrast to this interpretation the decision under appeal objects that, since claim 21 had been withdrawn on 6 June 1983, it did not constitute part of the parent application on 31 August 1983 and could not therefore be converted into a divisional application. This analysis ignores the factual circumstances and the conditional nature of the withdrawal filed on 6 June 1983 solely with a view to a later divisional application. The applicant wrote on that date, at the same time as sending a redrafting of claims 19 and 20 to the EPO: "in accordance with the examiner's suggestion, we are filing a divisional application for the intermediate products of formulae VIII and X, and for their method of preparation", i.e. for former claim 21. The use of the present tense with a future meaning ("were are filing") stresses sufficiently the linked nature of the two actions: withdrawal of a claim and submission of a divisional application. This link is evident in any case from all the circumstances of the application. Generally speaking, as stated in the summary of a decision of the Legal Board dated 25 March 1981 (J11/80, OJ (EPO) 5/1981, p. 141), "a request for withdrawal should only be accepted without question if it is completely unqualified and unambiguous". This was clearly not the case here. The same ruling was given in a decision of 3 August 1984 (J24, 25 and 26/82, OJ(EPO) 1984, p. 467) in which it was found that, where claims are withdrawn specifically under Rule 25(1), the applicant's restrictive intention is not to be interpreted in isolation on the strength of particular statements but in the context of the entire procedure. This applies a fortiori in the present case since the applicant has never given any reason to believe that on 6 June 1983 or later he wished simply to drop the subject-matter of claim 21 in suit. In these circumstances the appeal must be allowed and the divisional application filed on 31 August 1983 declared admissible.

11. No application has been made for reimbursement of the appeal fee in accordance with Rule 67 EPC, and the circumstances of the case would not justify such reimbursement.

ORDER

For these reasons, it is decided that:

1. The decision of the Receiving Section dated 17 January 1984 is set aside.

2. The European divisional application filed on 31 August 1983 shall be deemed to have been filed on the date of filing of the earlier application, i.e. 19 May 1981, and shall have the benefit of that application's right of priority, i.e 15 May 1980, provided that its subject-matter does not extend beyond that of the earlier application.