CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1316/20 – The validity of a divisional application is not objectionable in opposition appeal proceedings

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The patent relates to a cleaning agent for removing paint layers on surfaces, method for manufacturing the agent and cleaning method.

The patent results from a divisional application of the parent application EP 08804501/EP 2 195 408. The parent application was filed as a PCT application PCT/EP2008/62573.

Brief outline of the procedure

The opponent appealed the decision of the OD to reject the opposition.

The proprietor defended the patent as granted and filed three sets of claims as AR 1 to 3.

The board set aside the decision of the OD and ordered maintenance of the patent according to claims 1 to 6 of AR1 newly filed at the OP before the board and a description to be adapted thereto. All previous requests were withdrawn by the proprietor.

The case is interesting with regard to the validity of divisional application.

The filing of the divisional application

The divisional application was filed on 19.04.2010 and therefore on the day before the expiry of the 31-month time limit under R 159(1) and Art 22 PCT for entry into the regional European phase.

On 19.04.2010, the request for examination was filed and the corresponding fees for entry into the European phase were paid. However, it appears that a request for early processing of the application was not filed, so that a processing prohibition existed for this application until the expiry of the 31-month period

The application is thus not considered to be a pending European application until the expiry of this time limit, cf. J 18/09, Reasons 9.

The European phase of the parent application did not begin until 20.09.2010.

A divisional application filed before entry into the European phase is inadmissible because R 36(1) requires a pending parent application.

The OD’s

The OD considered these facts irrelevant in the present case. It stated that the divisional application had nevertheless been granted and that the deficiency of a non-pending parent application had been cured by the grant.

Moreover, it had been the valid practice of the EPO Receiving Section to accept a division even on the day of expiry of the 31-month time limit under R 159(1). This practice had only been changed with the publication of decision J 18/09 and the applicant was to be granted protection of legitimate expectations in respect of this earlier practice.

Moreover, no ground of opposition was apparent with which an opponent could complain of this error.

The opponent’s position

In his grounds of appeal, the opponent stated that the divisional application on which the patent in suit was based was not valid and that the decision of the OD was vitiated by a substantial procedural defect which justified reimbursement of the appeal fee. In addition, he raised grounds for opposition under Art 100(a), (b) and (c).

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 gave rise to a ground for opposition under Art 100(c) = Art 76(1).

Furthermore, as no valid divisional application was filed on 19.04.2010, any subsequent amendments to the claim version submitted go beyond the non-existent content of the application and violate Art 100(c) = Art 123(2).

For the opponent, the lack of a pending parent application is thus a ground for opposition under Art 100(c).

The proprietor’s position

The proprietor considered that the granted divisional, albeit in error, results from a formal administrative act. He further argued that decision G 1/09 of 27.09. is in any case only applicable ex nunc and not ex tunc.

Moreover, the proprietor was to be granted protection of legitimate expectations and an erroneous administrative act was curable by granting the patent.

The board’s position

In the board’s view, the following points are relevant to the decision:

Firstly, to what extent decision J 18/09 is applicable to the present facts? The fact that there was no pending parent application within the meaning of R 36(1) was extensively substantiated in J 18/09, but this was not without criticism. See Singer/Stauder (Hespers/Quarch), European Patent Convention, 8th edition 2019, Art. 153 para. 196 et seq.

Secondly, whether, if one follows decision J 18/09, can the defect of a not-admissible divisional application be cured by the grant of the patent. The board saw no legal basis for such a sweeping conclusion.

Thirdly, whether, if one follows decision J 18/09, there may be a possible protection of legitimate expectations for divisional applications filed before the publication of J 18/09. The board considered this questionable because decision J 18/09, referring to the examination guidelines in force at the time, stated that the Office had always not regarded as pending an application that had not yet entered the European phase.

Fourthly, whether the defect of a pending parent application can be objected to in opposition or appeal proceedings is questionable as well. For the board this was not the case. .

The board’s conclusion

For the board, it is a recognised fat that not all deficiencies of an application can also be objected to in opposition proceedings, but only those mentioned in Art 100. This also applies to those deficiencies which are not formalities: lack of clarity is no more a ground for opposition than lack of payment of fees.

According to the board, the lack of pendency of the parent application cannot lead, in the board’s view, to the priority not having been validly claimed, because the claiming of priority under Art 87(2) only requires a valid previous application, not a valid parent application.

Art 76(1) and Art 123(2) are not applicable

It could be objected in the opposition that the divisional application went beyond the content of the parent application. However, if there had never been a pending parent application, each divisional application would go beyond the parent application. This might be true formally, that the divisional application can be deemed going beyond the content of the parent application.

However, in the board’s opinion this provision is concerned with the technical content of the parent application, not with its pendency. In other words, the content of the divisional application does not go beyond the parent application simply because the latter was never pending and would therefore have to be regarded as a nullity with no content.


When taken as such, the present decision is certainly anecdotal. It is not so frequent that a divisional application is filed before the end of the 31 months period for entering the regional phase. J 18/09 has furthermore put an end to the corresponding practice of the EPO.

The board has decided that only the grounds of opposition under Art 100 can be opposed to a granted patent irrespective of the circumstances before grant. This is approach is rather pragmatic and speaks for itself.

The present decision is however to be associated to T 1482/21, also commented on this blog.  

In T 1482/21 the board held, that in subsequent proceedings, neither an OD nor a BA are entitled to review and overturn a decision granting a request for re-establishment of rights. The appealing opponent did query the validity of the decision of restoring priority.

In the present decision, the board indirectly dismissed the argument of legitimate expectations brought forward by the proprietor. In T 1482/21 the protection of legitimate expectations of the proprietor was a key factor in the decision of said board. In T 1482/21, the board refused to refer a question to the EBA.

In both cases, the grant of a patent can be considered as healing any defect having occurred since filing and only the grounds of opposition under Art 100 are applicable.

It would thus be interesting to know whether the EBA agrees to consider that decisions of the receiving sections cannot be challenged in subsequent procedures, or if the grant of a patent as healing any defect having occurred at filing.

Another way to put the question: is any action of the receiving section valid, even if taken for the wrong reasons and cannot be reviewed by subsequent bodies of the EPO? To which extent have administrative decisions of the receiving section to be accepted, even if they are wrong? E.g. what about an amendment under R 139? If taken by an ED a correction under R 139 can be challenged in opposition, but not if it has been taken by the receiving section?

On the procedure

We have here again a decision of the OD set aside by a board. Another one of those 50%+ comparable published decisions of a board.

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