Brief outline of the procedure
By decision of 03.11.2025, after the procedure under R 112, the RS decided that EP-A-XX XXX XXX.X was not to be treated as a divisional application of the earlier EP-A-YY YYY YYY.Y.
The parent application was refused by the ED on 18.7.2024. The appeal against this decision was deemed inadmissible as the SGA was not filed until after the expiry of the relevant time limit under Art 108. This decision is dated 20.02.2025 and was notified on 26.02.2025.
The divisional application was filed on 05.12.2024, i.e. after the time limit for filing the SGA in the parent application, but before the decision on the parent was taken and notified to the applicant.
It was therefore necessary to decide whether the divisional was filed while the parent was still pending, cf. R 36.
The position of the Receiving section
The divisional application was filed after the deadline for filing the SGA in respect of the parent application had expired. It is therefore “invalid and thus inadmissible” as a divisional application.
The Receiving Section referred to decision J 23/13, which had held that the decision to reject the parent application became final upon expiry of the time limit for filing the grounds of appeal. The RS also referred to G 1/09.
An inadmissible appeal has ex tunc effect; it is treated as if it had never been filed. Consequently, the provisional suspension of legal effect ceases with retroactive effect as soon as the appeal is found to be inadmissible.
An inadmissible appeal has no suspensive effect, and the appeal proceedings are deemed to have been terminated with retroactive effect.
The applicant’s point of view
The applicant argued that there was no provision in the EPC which required for the suspensive effect of an appeal that the appeal must be admissible or that appeal proceedings must be successful.
Therefore, the filing of the appeal meant that the suspensive effect prevented the decision to refuse the parent application from becoming final until a final decision on the parent was taken. Accordingly, the parent application was pending until this date with the consequence that the divisional application has been timely filed.
When appeal is filed against a decision refusing a patent application, this leads to a “particular suspensive effect” allowing a divisional application to be validly filed during appeal proceedings, independently of the outcome of such proceedings.
For those reasons the present divisional application had to be considered as a validly filed divisional application even though the appeal against the refused parent application was inadmissible.
The board’s decision
G 1/09 not directly applicable in the present instance
The EPC itself does not define the term “pending application”. However, in its decision G 1/09, Reasons 3.2.4, the EBA found that, in the specific context of R 25 EPC 1973, now R 36, a pending earlier European patent application is a patent application in a status where the substantive rights arising therefrom under the EPC still exist.
Under Art 106(1), an appeal has suspensive effect. It follows that the effective filing of an appeal prevents the contested decision from becoming final. The board quoted J 28/94, J 23/13, and J 22/13.
In general, therefore, a first-instance decision rejecting the application can only become final once the appeal proceedings have been concluded without the first-instance decision being set aside, thereby ending the suspensive effect of the appeal.
The question arises, however, as to whether exceptions to this general principle should be made where an appeal is or has become manifestly inadmissible. In this context, reference was made to G 2/19, Reasons B.II.9.
Evolution of case law
Following G 2/19, the board held in J 1/24, the board held that “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.”
Both, J 22/13 and J 23/13 concerned a situation in which an applicant had lodged an appeal against the rejection of their earlier application but had failed to substantiate it. In J 23/13, the divisional application had been filed before the expiry of the time limit for filing the grounds of appeal, whereas in J 22/13 it was filed only after that time limit had expired.
The present case is similar to the one on which J 22/13 was based, whereby, in the present case, a SGA was submitted after the deadline for filing such a statement had expired.
Following the legal view set out in decision J 22/13, the applicant’s earlier application would be regarded as no longer pending at the time the divisional application was filed.
The case law was further developed in key respects by the LBA in J 1/24. However J 1/24 was contradicted in T 700/25. In T 700/25, the board held that, contrary to J 1/24, an appeal of a decision to grant cannot be assumed validly to exist and therefore had no effect. In T 700/25, the board did not have to rule on the validity of a divisional application, but rather on the refund of the appeal fee.
In the present case, the board held it not necessary to address in detail the criticism levelled at the findings of J 1/24 in T 700/25. However, it should be noted, that in recent years a number of board decisions have been issued in which appeals against decisions to grant patents were successful and were deemed both admissible and well-founded, cf. T 1003/19, T 2081/16 and T 408/21, and that the view that such an appeal is, in any event, manifestly inadmissible therefore appears highly questionable.
The board’s conclusion
Recent developments in case law therefore suggest that the suspensive effect of an appeal, which is expressly provided for in Art 106 (1), should be denied only in very exceptional cases “on the grounds of manifest inadmissibility”, for example where – as in the case of a third-party appeal – the remedy sought is, in principle, not available under the EPC at all, cf. G 2/19.
However, if – as in the present case – an appeal initially lodged validly subsequently becomes inadmissible because the grounds of appeal are not filed or are filed only after the prescribed time limit has expired, this is not a sufficient reason to make an exception to Art 106 (1), and to regard the suspensive effect that initially arose as having already lapsed upon expiry of the time limit for filing the grounds of appeal.
Rather, the suspensive effect ceases only upon the conclusion of the appeal proceedings, in the present case after the BA has established the inadmissibility of the appeal by decision. This cessation has no retroactive effect with regard to divisional applications filed whilst the suspensive effect was in force.
The board was therefore of the opinion that the view taken in J 22/13 should no longer be followed.
The divisional application was thus validly filed.
Comments
The present decision seems a logical development of the principle set out in G 1/09.
A divisional application can be filed as long as the parent application is still pending, i.e. until a final decision on the parent has been issued.
This is manifestly the case when the appeal against the refusal of the parent has been successful.
Whether the appeal against the parent is not admissible or not allowable appears thus irrelevant.
The case is also interesting for other reasons:
- the chair of the LBA in J 1/24 and in the present decision was the same, and different from that in in J 22/13 and J 23/13
- in the present panel, one member was already part of the panel in J 22/13 and J 23/13, most probably in the same function.
- the LQM in T 700/25, in which J 1/24 was criticised, was the same as in T 56/21.
I leave any further conclusion to the readership.
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