The European Patent Convention (EPC) allows an applicant to divide a pending European patent application by filing one or more divisional applications. This may be done either in response to a non-unitary objection or voluntarily, e.g. for procedural or commercial reasons. However, a divisional application can only be filed if the parent application is pending and certain time limits are being observed (see contribution from April 6, 2009).

The EPC does not clearly define the term “pending application”. This has led to some uncertainty in the past as to the point in time at which the pending status of an application that has been refused by the Examining Division ends and therefore the date up to which a divisional application may still be filed. In the past, the European Patent Office (EPO) considered an application pending until notification of the refusal of the application. However, if an appeal was lodged, the parent application was considered “to have been made pending again” and a divisional application could still be filed during appeal proceedings (‘Notice of the EPO’ OJ 2002, 112). In practice, this sometimes led applicants to appeal a refusal solely for the purpose of filing a divisional application.

Recently, the Enlarged Board of Appeal had to deal with the question until when a divisional application can be filed if the parent application has been refused by a decision of the Examining Division and no appeal has been filed within the appeal period. The Board concluded that in this case – contrary to past EPO practice – divisional applications may validly be filed until expiry of the time limit for filing a notice of appeal (decision G 1/09).

This is good news for applicants whose patent application has been refused by the Examining Division. They now have the option to still file a divisional application during the appeal period without the actual need to appeal the refusal.