EPO Boards of Appeal are divided on whether divisionals can be filed after grant

In J 1/24, Board 3.1.01 (the Legal Board of Appeal) surprised many practitioners by treating a divisional filed after the publication of the mention of the grant as validly filed. As this went against the standard EPO practice that applications are no longer pending after grant such that divisionals can no longer be filed, it was generally recommended not to rely on this decision. This applies all the more so in view of T 700/25, in which Board 3.4.01 (a Technical Board of Appeal) goes out of its way to question the legal reasoning underlying J 1/24.

Recap on J 1/24

Patentee filed an appeal against the decision to grant EP3660979 after the publication of the mention of the grant based on rather flimsy grounds (recent amendment to the EPO Guidelines necessitating amendments for the sake of Article 84). The EPO then deleted the date of the publication of the mention of the grant from the EPO bulletin. Patentee then filed a divisional and, after filing their grounds of appeal, subsequently withdrew the appeal. In the divisional case, the receiving section then issued a loss of rights communication on the basis that the application could not be processed as a divisional as it was not filed while the parent was pending. Applicant requested a decision under R. 112(2). This decision was appealed and eventually led to decision J 1/24.

• The Board expressly rejected the stricter position of J 28/03 (making the validity of the divisional dependent on the outcome of the appeal). They relied on the suspensive effect of appeals and further noted that “the deletion of the date of the mention of grant prevented the grant of the patent becoming effective”, and that there were still substantive rights derivable from the application.
• By analogy to G 1/09 (i.e., divisional can be validly filed during period for appealing the decision of refusal because there were still substantive rights derivable), they concluded that the application was still pending and could form a basis for filing a divisional. The later withdrawal of the appeal in the parent case was not a problem.
• They then remitted the case to the receiving section “for further prosecution with the order to treat the application as a divisional application”.

Divergence in T 700/25

This also concerned a case in which patentee filed an appeal against the decision to grant after the publication of the mention of the grant based on spurious grounds (incorrect antecedent basis in claim 6). Also here, nearly a month after filing the appeal, the patentee filed a divisional application. And also here, the EPO deleted the date of the publication of the mention of the grant from the EPO Bulletin, but in this case after the divisional was filed. The patentee  subsequently withdrew the appeal and requested reimbursement of the appeal fee – which is the subject of this appeal.

There are therefore several differences in the proceedings relative to J 1/24, namely:

• the date of the publication of the mention of the grant was only deleted after Patentee filed a divisional;
• the appeal case did not relate to the filing of a divisional, but rather to reimbursement of the appeal fee concerning the appeal against the grant of the parent; and
• the appeal was withdrawn before the grounds of appeal were filed.

Given the number of differences, it seems likely that the board could have settled this issue without commenting on J 1/24, especially as they ultimately reimbursed the appeal fee. But clearly they wanted to have their say on J 1/24 (though strictly speaking it means their reasoning is, as regards J 1/24, obiter – see our last comment below).

The main reasoning can be summarized as follows:

• Reason 6: the alleged deficiencies regarding the antecedent basis in claim 6 cannot justify the appeal as the appeal was not pursued. Instead, the board was of the view that the sole purpose of the appeal was to restore pendency to file a divisional application.
• Reasons 7 - 9: on the pendency point, “an appeal of the… decision to grant…, in order that the application again become "pending", within the meaning of Rule 36(1) EPC, is manifestly inadmissible and does not provide a valid reason for the payment of the appeal fee”. This was fundamentally because the applicant was not “adversely affected” by the decision to grant as required by Article 107 EPC.
• Reason 11: diverging from J 1/24 the board held that “an appeal of a decision to grant cannot be assumed validly to exist… Consequently, an applicant appealing a decision to grant must justify their entitlement to appeal and set out why that decision is not in conformity with the applicant's requests or why it otherwise negatively affects them”. In this particular case, there was also a presumption of non-entitlement since the appeal was withdrawn before filing the grounds of appeal, meaning entitlement to appeal was never justified.
• Reason 13: the board instead follows earlier decision J 28/03, which J 1/24 had in turn criticized: “The suspensive effect of a subsequent appeal cannot remove [end of pendency after grant], since this would amount to cancellation of the contested decision... Indeed, the resumption of examination proceedings is the relief sought by the appeal of the decision to grant... The retraction of the publication of the mention of grant can… only be ordered… if the appeal is allowed by the competent Board.” It follows then that the deletion of the date of the publication of the grant in J 1/24 would not have been considered by this Board to be sufficient to restore pendency, and allow valid filing of the divisional.

As for the fate of the divisional in T 700/25, the file is not yet open to inspection. The Receiving Section will have to make a decision on whether it was validly filed, leading to the possibility of an appeal there too, and questions about res judicata.

Conclusion

Where does this leave J 1/24? Can we consign it to history as an aberration? Or – like the divisional application it allowed - does it have any future? We have two comments.On the one hand, it was never advisable to rely on J 1/24: as a rule, divisionals should be filed at the latest on the day before the publication of the mention of the grant. For those unhappy cases where this opportunity has been missed, J 1/24 provided a possible roadmap to validly pursuing a divisional even without convincing reasons why the appeal against the grant is allowable. In T 700/25 the patentee did not exactly follow the roadmap, but this seems not to have been decisive. The key point seems to be that Board 3.4.01 fundamentally do not agree with J 1/24, meaning that (in the absence of an Article 109 EPC interlocutory revision) it  would  be necessary to have the appeal allowed in order to validly pursue the divisional. This makes the route in J 1/24 even less reliable.

On the other hand, as mentioned above the observations of Board 3.4.01 on J 1/24 are strictly speaking only obiter dicta. If the fact situation in J 1/24 were to be repeated, it would be open to a later board to follow J 1/24 and disagree with the criticism of that decision in T 700/25. The two key differences of fact were these. First, in J 1/24, the grounds of appeal had been filed so the appeal was at least admissible and, arguably, not capable of being dismissed as unjustified. Second, in T 700/25 the appeal was against refusal of the Examining Division to reimburse the appeal fee whereas in J 1/24 the appeal was against the refusal of the Receiving Section to process the divisional application. For those in despair – or almost – J 1/24 may still offer some hope.

*Artwork by William Blake, Public domain, via Wikimedia Commons