T 1316/20 - Pendency of parent in opposition

Key points

• The patent is granted from a divisional application. According to the opponent, the parent was not pending on the day the divisional was filed. If the EPO finds so during examination, the divisional has no filing date and will be refused.
•  In what possibly has a relation with recent decision T 1482/21 (no review of the decision to grant re-establishment in the priority period during opposition), the Board decides that the pendency oft the parent can not be reviewed in appeal. 
• The Board, in machine translation:  "whether the deficiency of a pending parent application can be challenged in opposition or appeal proceedings. This is to be denied in the present case. First of all, it is recognized that not all deficiencies in an application can also be objected to in opposition proceedings, but only those mentioned in Article 100 EPC. This also applies to deficiencies that are not formalities: a lack of clarity is just as little a reason for an objection as the lack of payment of fees." 
• " According to the appellant, the absence of a pending parent application is a ground for opposition under Article 100(c) EPC. In the opposition, it could be objected that the divisional application went beyond the content of the parent application. However, if there was never a pending parent application, each divisional application went beyond that. This may be formally the case; however, the Board is of the opinion that the provision is concerned with the technical content of the parent application and not with its pendency. To put it another way: the content of the divisional application does not go beyond the parent application simply because the latter was never pending and should therefore be regarded as meaningless nullity, so to speak. From the Board's point of view, the fact that the parent application is not pending cannot mean that priority has not been validly claimed, because claiming priority under Art. 87(2) EPC only requires a valid prior application and not a valid parent application . " 
• As a comment, the switch to Art.87 in the last sentence is not very clear to me. Though I can see why it was brought up, as Art.87 is more frequently examined in opposition.
• Let's see if the Enlarged Board in G 1/22 * declares the issue of the formal entitlement to priority similarly non-reviewable in opposition. (* - not yet available at the time of writing)
• For the examination of novelty under Art.54, you need to know the filing date of the patent, right? How do we know it? Is the filing date mentioned in the DTG irrefutable, i.e. a non-reviewable decision of the Examining Division?
• The issue with the pendency of the parent is that the divisional application was filed in April 2010, and before the expiry of the 31-month period for the parent application, which was a PCT application, and without a request for early processing, and on the same day as the acts for entering the European phase were performed.
• Under the then applicable version of Rule 164(2), with the EPO as ISA, the filing of the divisional made sense.
• Under J 18/09, the divisional could only be filed "once the international application has entered the [regional phase before the EPO]: "It is the very essence of the unitary filing system drawn up by the PCT that in the international phase the international application is subject to the procedural rules of the PCT and not to those of the national laws (possibly divergent from those of the PCT) which may become applicable once the international application has entered the national or regional phase before the competent national or regional office. ", see also r.14 and r.15.
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EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://new.epo.org/de/boards-of-appeal/decisions/t201316du1

Machine translation

1. On the validity of the divisional application

1.1 The divisional application on which the patent in suit is based was filed on 19 April 2010 and therefore on the day before the expiry of the 31-month period under Rule 159(1) EPC and Article 22 PCT for entry into the regional European phase of international application PCT/EP2008/62573 or of EP 08804501 (parent application) filed with priority on September 19, 2007. On April 19, 2010, the request for examination was filed and the relevant fees paid for entry into the European phase. However, it appears that no request for early processing of the application was made, so that this application was prohibited from processing until the 31-month period had expired (see Singer/Stauder (Hespers/Quarch), Europäisches Patentverkonvention, 8th edition 2019 , Art. 153 para. 196 et seq.). The application is therefore not considered a pending European application until the expiry of this period (decision J 18/09, reason 9). Rather, the European phase of the parent application did not begin until April 20, 2010. A divisional application made before entry into the European phase is inadmissible because Rule 36(1) EPC requires a pending parent application and the division of a PCT application is not provided for in this phase (decision J 18/09, reason 11).

1.2 The contested decision regarded this as irrelevant in the present case. She stated that the divisional application was nevertheless granted and that the deficiency in a pending parent application had been remedied to that extent. In addition, it was the current practice of the Receiving Section of the EPO to accept a division even on the day of the expiry of the 31-month period under Rule 159(1) EPC. This practice was only changed with the publication of decision J 18/09 and the applicant should be granted protection of legitimate expectations on this earlier practice. Moreover, no ground for opposition was apparent with which an opponent could object to this error.

1.3 The appellant contests the decision under appeal and objects that the pendency of a European patent application constitutes a substantive legal requirement (decision G 1/09, reasons: 3.2.4 and 3.2.5 and J 18/04, reasons: 7 and 8), which cannot be remedied by granting the divisional application. The provisions of Articles 23 PCT, 150 EPC and Rules 36 and 76 EPC are clear. A protection of legitimate expectations is not applicable to substantive legal requirements (see G 1/09, point 2.5). In the absence of a parent application pending at the time of division, the divisional application filed necessarily went beyond the parent application and thus constituted a ground for opposition under Art. 100(c) 2nd alternative EPC (violation of Art. 76 EPC). Also, since on the 19th

1.4 In its reply, the Respondent considers the accepted division (albeit erroneous) to be a formal administrative act and argues that decision G 1/09 of 27 September 2010 should in any case only be applied ex nunc and not ex tunc. In addition, the patent proprietor should be granted protection of legitimate expectations and an incorrect administrative act can be cured by granting the patent.

1.5 From the point of view of the Chamber, the following points are relevant to the decision:

1.5.1 First, to what extent decision J 18/09 is applicable to the facts at hand. It is undisputed between the parties that the parent application had not yet entered the European phase at the time of the divisional application on April 19, 2010. The fact that it was not a pending parent application within the meaning of Rule 36(1) EPC was extensively justified in the cited decision J 18/09, but was not without criticism (Singer/Stauder (Hespers/Quarch), Europäisches Patentverkonvention, 8. Edition 2019, Art. 153 para. 107 - 110).

1.5.2 Second, if, following decision J 18/09, the lack of an allowable divisional application is remedied by the grant of the patent. However, the Chamber sees no legal basis for such a blanket conclusion.

1.5.3 Third, if following decision J 18/09, there may be protection of legitimate expectations for divisional applications made before the publication of that decision. The Board considers this to be questionable because decision J 18/09, with reference to the Examination Guidelines applicable at the time, stated that the Office had always not regarded an application that had not yet entered the European phase as pending (reason 10). Furthermore, the board agrees with the appellant that the pendency of the parent application is a substantive requirement for the filing of a divisional application for which protection of legitimate expectations does not seem to come into question. Ultimately, however, this can be left open due to the following consideration.

1.5.4 Fourth, whether the deficiency of a pending parent application can be challenged in opposition or appeal proceedings. This is to be denied in the present case. First of all, it is recognized that not all deficiencies in an application can also be objected to in opposition proceedings, but only those mentioned in Article 100 EPC. This also applies to deficiencies that are not formalities: a lack of clarity is just as little a reason for an objection as the lack of payment of fees. According to the appellant, the absence of a pending parent application is a ground for opposition under Article 100(c) EPC. In the opposition, it could be objected that the divisional application went beyond the content of the parent application. However, if there was never a pending parent application, each divisional application went beyond that. This may be formal however, the Board is of the opinion that the provision is concerned with the technical content of the parent application and not with its pendency. To put it another way: the content of the divisional application does not go beyond the parent application simply because the latter was never pending and should therefore be regarded as meaningless nullity, so to speak. From the Board's point of view, the fact that the parent application is not pending cannot mean that priority has not been validly claimed, because claiming priority under Art. 87(2) EPC only requires a valid prior application and not a valid parent application . the content of the divisional application does not go beyond the parent application simply because the latter was never pending and should therefore be regarded as meaningless nullity, so to speak. From the Board's point of view, the fact that the parent application is not pending cannot mean that priority has not been validly claimed, because claiming priority under Art. 87(2) EPC only requires a valid prior application and not a valid parent application . the content of the divisional application does not go beyond the parent application simply because the latter was never pending and should therefore be regarded as meaningless nullity, so to speak. From the Board's point of view, the fact that the parent application is not pending cannot mean that priority has not been validly claimed, because claiming priority under Art. 87(2) EPC only requires a valid prior application and not a valid parent application .

1.6 In view of the above, the Board therefore finds that the lack of a valid parent application cannot be asserted in opposition or appeal proceedings against the divisional application that has been granted.

Consequently, the appellant's above objection under Article 100(c) in combination with Article 76(1) or 123(2) EPC is ineffective.