J 0001/24 - Appeal against grant and divisional

Key points

• If a patent is granted, what is the last day for filing a divisional application? The day before the publication of the mention of the grant in the Bulletin (G 1/09).
• For any trainees reading this post: the Bulletin can be found here: https://www.epo.org/en/searching-for-patents/legal/bulletin/download 
• However, what if the mention of the grant is deleted by a later notice in the Bulletin? This may happen e.g. in case of a stay of proceedings under R.14?
• * Note that the Bulletin is (supposed to be) inalterable. Hence, a new notice is published in a later issue of the Bulletin that states that the publication of the mention of the grant is deleted.
• Then, no divisional application can be filed during the stay, but if there is some time between the resumption of proceedings and the new mention of the grant in the Bulletin, a divisional application could be filed.
• In this case, the proprietor filed an appeal against the decision to grant the patent. The EPO then, as a matter of fact, rescinded the publication of the mention of the grant (after receipt of the Notice and payment of the appeal fee but before receipt of the Statement of grounds). 
• You can find the deletion of the mention of the grant here: https://archive.epo.org/epo/pubs/bulletin/2021/bulletin2121.pdf#page=2822 .
• The mention of the grant itself can still be found here: https://archive.epo.org/epo/pubs/bulletin/2021/bulletin2111.pdf  on page 1163.
• Small detail: the Bulletin contains three instances of the mention of the grant: sorted by publication number, by applicant name and by patent classification. Question to readers: why? (experienced patent attorneys, feel free to tell stories in the comments about how the Bulletins were used by patent attorney firms and in-house departments in the past).
• The proprietor (then applicant again) filed the statement of grounds, subsequently two divisional applications, and then withdrew the appeal.
• The Receiving Section decided that the division application "will not be treated as a divisional application".  The applicant appealed, leading to this decision of the Legal Board. 
• As the divisional application was not yet published (in 204) (even though it was filed in 2021), the publication of the decision is anonymised. However, the "datasheet" part of the published decision includes the title of the application, "ELECTRONIC DEVICE WITH METAL FRAME ANTENNA", which easily leads to EP 19209269.0 being the parent application. Because the Legal Board allows the appeal and, therefore, the divisional application should be published soon, I feel free to mention the parent application number here. 
• As a small detail, the decision indicates that the Receiving Section issued an interlocutory decision to that effect (which allowed a separate appeal). However, I wonder what would have happened if no appeal had been filed? As it is an interlocutory decision, the proceedings are supposed to continue - with search and examination perhaps on the basis of the application being a normal patent application (which then has invalid priority and lack of novelty over the already published parent case).
• Turning to the appeal at hand, J 28/03 had held that an appeal against a decision to grant does not allow the filing of a divisional application during the appeal. 
• However, as the present Board observed, in J 28/03, the publication of the mention of the grant was not deleted. 
• The current practice of the EPO of deleting the mention of the grant in case of an appeal by the proprietor against a grant decision, is a reason for the Legal Board to consider that the application is pending in the sense of Rule 36 during such an appeal. 
• Note, the Legal Board does not make this effect dependent on whether the mention of the grant is deleted or not.
• +"The current practice of the EPO treats appeals against the grant of a patent as appeals validly filed, with the consequence that the date of the mention of the grant is deleted in such a case. If later the appeal is withdrawn or turns out to fail, there will be a new date of publication of the grant. This is a requirement for the effectiveness of the grant of a patent (Article 64(1) EPC). The present Board considers that it is inconsistent to consider an appeal in two different ways: first for the mention of the grant to be deleted, the appeal only needs to be admissible [*] and second for the suspensive effect to apply is dependent on the outcome of the appeal.
• The Legal Board appears to point out that the "first instance" acts inconsistent by, on the one hand, considering the appeal against the grant to be validly filed (and therefore deleting the mention of the grant) and, on the other hand, considering the appeal to be insufficient to make the application pending again in the meaning of Rule 36.
• Note that the decision to delete the mention of the grant seems to be taken "for" the Examining Division (see here).
• * - Since the mention of the grant was deleted before the filing of the Statement of grounds, admissibility of the appeal is not a strict requirement, but rather something similar to "deemed to have been filed" (i.e., a timely filed notice of appeal of the proprietor and payment of the appeal fee) (note, an appeal by a third party will be inadmissible, not deemed to not have been filed, but is likely insufficient to trigger the deleting of the mention of the grant).
  
  
• "There is no basis in Article 106(1) EPC for such an approach. In the established case law of the Boards of Appeal [], an example of a clearly inadmissible appeal that should have no suspensive effect, is an appeal without basis in the EPC, e.g. filed by a third party. [*] The EPC has no provision restricting appeals of the applicant against the grant of a patent. Such an appeal cannot therefore be seen as clearly inadmissible. As a consequence such an appeal has suspensive effect according to Article 106(1), second sentence, EPC. That means for the present case that the parent patent application was still pending when the divisional application was filed."

• I am  not sure if this also applies to appeals of the applicant filed well after the expiry of the appeal period, but for sure we will find out that in a future decision.
• * - see G 2/19 about an appeal by a third party against the grant of a patent based on clarity objections. In such a case, no oral proceedings are to be held either. 
• Note, under G 1/09, pendency in the sense of Rule 36  does not depend on the suspensive effect of an appeal (such that an appeal can be filed in the appeal period after a decision to refuse a patent application. ). 
  
  
• Note that it seems that under the present decision, filing a Statement of grounds is not necessary. Hence, a divisional application can be filed during the appeal period by filing a Notice of Appeal and paying the appeal fee. If the appeal is subsequently withdrawn before the expiry of the period for filing the Statement of grounds, the appeal fee is refunded (Rule 103(1)(b)). 
  
  
• Finally, the appeal in the parent case is interesting in itself, see the statement of grounds. The applicant wished to amend the description to delete the statement that Figure 24 was not according to the claims; this statement was added by the Examining Division in the Intention to grant (properly marked). All the currently hot issues of claim interpretation and adapting the description to the claims are at play already. Whether the applicant would have met the "adversely affected" requirement of Art. 107 for admissibility of the appeal in view of Rule 71(5) remains an open question as the appeal was withdrawn before the Board gave a preliminary opinion.

EPO  J 1/24 - J1/24 - J 0001/24

You can find the link to the decision and an extract of it after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/j240001eu1

1. The decision is issued in writing without holding oral proceedings, because the appellant requested oral proceedings only in the event that the appeal would not be allowed. The Board does not consider oral proceedings to be expedient either.

2. The appeal is admissible. A separate appeal has been allowed in the decision under appeal in accordance with Article 106(2) EPC.

3. Rule 36(1) EPC provides that a divisional application may be filed in relation to any pending earlier European patent application.

4. The question to be decided in the present case is whether the parent application was still pending according to Rule 36 EPC when the divisional application was filed.

5. In the EPC there is no definition of the term "pending application". In G 1/09, the Enlarged Board of Appeal came to the conclusion that a "pending (earlier) European patent application" in this context is a patent application in a status in which substantive rights deriving therefrom under the EPC are (still) in existence (G 1/09, Reasons 3.2.4.).

6. The substantive rights of an applicant include provisional protection under Article 67 EPC. Pursuant to Article 67(4) EPC, the European patent application shall be deemed never to have had the effects of provisional protection when it has been withdrawn, deemed to be withdrawn or "finally refused". Substantive rights may therefore continue to exist after the refusal of the application until the decision to refuse becomes final (G 1/09, Reasons 4.2.1.).

7. It is a well-established concept, that decisions of the administrative departments of the EPO in patent granting procedures do not become final until the expiry of the period for seeking ordinary means of legal redress. The legal consequence of Article 67(4) EPC is a provision indicating the point in time at which substantive rights conferred by a European patent application and its pending status must end.

The retroactive effect of a final decision to refuse on the rights conferred upon the applicant does not influence the pending status of the application before such a decision is final.

As an obiter dictum, G 1/09 states that in the case of grant, the pending status of the European patent application normally ceases on the day before the mention of its grant is published. From that point in time, substantive rights under the EPC no longer derive from the patent application but from the granted patent (Reasons 4.3.2.).

8. The earlier decision J 28/03 differentiated between the decision to refuse the parent application and the decision to grant the parent application. In the first case a divisional application should be allowed as long as the appeal procedure has not been terminated. Whereas in the second case of a decision to grant the patent fully in accordance with the request of the applicant, Rule 25(1) EPC (1973), allowing the filing of a divisional application, did not apply.

9. The Notice of the Office dated 9 January 2002 concerning amendment of Rule 25(1), 29(2) and 51 EPC (1973), published in OJ EPO 2002, 112 reads:

"An application is pending up to (but not including) the date that the European Patent Bulletin mentions the grant of the European patent, or until the date that the application is refused, withdrawn or deemed withdrawn; if notice of appeal is filed against the decision to refuse, a divisional application may still be filed while appeal proceedings are under way (see Guidelines for Examination in the European Patent Office, Chapter A-IV, 1.1.4)."

So the appeal against the decision to grant the patent as requested could not benefit from the suspensive effect of an appeal against the refusal of a patent application (J 28/03, Reasons 9).

In the case J 28/03, the date of publication of the mention of the grant was not deleted, so that the grant of the patent became effective. The earlier patent application was therefore no longer "pending".

10. On the contrary in the present case, the date of publication of the mention of the grant had been deleted as a consequence of the appeal filed.

Therefore, the patent application was still pending.

10.1 Moreover, the principle stated in J 28/03 that the answer to the question, whether the parent patent was still "pending", depended on the outcome of the appeal against the grant of the parent application, is not convincing.

According to Article 106(1), second sentence, EPC, an appeal has suspensive effect.

This provision does not distinguish between an appeal against the refusal or against the grant of a patent.

10.2 In the later decision G 1/09 (Reasons 4.2.4.), it is stated that a patent application, which has been refused by the Examining Division, is thereafter still pending within the meaning of Rule 25 EPC 1973 until the expiry of the period for filing an appeal.Thus on the day after this period, it is no longer pending if no appeal was filed. The same conclusion applies to Rule 36(1) EPC in its former and its current version.

10.3 There are no "pending grant proceedings" required, because pending proceedings cannot simply be equated with a pending application (G 1/09, Reasons 4.2.5.). Support for such a conclusion can also be drawn from the fact that proceedings are no longer pending if they had been stayed according to Rule 14(1) EPC, nevertheless, the patent application remains pending.

The conclusion in G 1/09 was that for Rule 25 EPC (1973) it is not relevant whether or not proceedings are pending before the EPO, but whether or not the patent application is still pending.

10.4 The issue is whether substantive rights still derive from the application or not.

In the present case, the deletion of the date of the mention of grant prevented the grant of the patent becoming effective. Thus, the substantive rights (e.g. provisional protection) still derive from the patent application which is therefore still pending.

10.5 The Board does not agree with the position of the board in J 28/03 (Reasons 11), that "an appeal against a decision granting a patent and resulting in the publication of the grant of the patent would be expected to be inadmissible with respect to Article 107(1) EPC and should therefore not benefit of the possibility to file a divisional application even during the appeal procedure. This can also be understood as to avoid abusive appeals to construe artificially pending 'parent applications'."

The current practice of the EPO treats appeals against the grant of a patent as appeals validly filed, with the consequence that the date of the mention of the grant is deleted in such a case. If later the appeal is withdrawn or turns out to fail, there will be a new date of publication of the grant. This is a requirement for the effectiveness of the grant of a patent (Article 64(1) EPC).

The present Board considers that it is inconsistent to consider an appeal in two different ways: first for the mention of the grant to be deleted, the appeal only needs to be admissible; and second for the suspensive effect to apply is dependent on the outcome of the appeal.

If this inconsistent approach were to be adopted, the situation would be uncertain and unclear especially for third parties, that could not know whether a patent application is still pending, as this would depend on the outcome of the appeal proceedings.

There is no basis in Article 106(1) EPC for such an approach. In the established case law of the Boards of Appeal (see Case Law of the Boards of Appeal, 10th edition, 2022, V.A.1.3.1.), an example of a clearly inadmissible appeal that should have no suspensive effect, is an appeal without basis in the EPC, e.g. filed by a third party. The EPC has no provision restricting appeals of the applicant against the grant of a patent. Such an appeal cannot therefore be seen as clearly inadmissible.

10.6 As a consequence such an appeal has suspensive effect according to Article 106(1), second sentence, EPC.

11. That means for the present case that the parent patent application was still pending when the divisional application was filed. Therefore, it is not necessary to deal with the further arguments (especially in respect to legitimate expectations) of the appellant.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the Receiving Section for further prosecution with the order to treat the application as a divisional application of European patent application EP XX XXX XXX.X.