When is a European patent application “pending”?
A reference has been made to the Enlarged Board of Appeal at the European Patent
Office (EPO) relating to whether or not divisional applications can be still filed
following a refusal of a parent application. Under European practice, a divisional
application can only be filed whilst the parent case is pending.
The question asked in the referral, G1/09, is whether an application that has been refused by a decision of the Examining Division is still pending until the expiry of the time limit for filing a notice of appeal, when no appeal is actually filed.
The patent application in question was refused by the Examining Division at oral proceedings. Following the oral proceedings, but before expiry of the time limit for filing an appeal against the decision, a divisional application was filed. The decision to refuse the parent application was not appealed. The divisional application was rejected as not validly filed, on the basis that the decision to refuse the parent application at the oral proceedings took legally binding effect immediately.
The applicant appealed, submitting that the parent application was still pending
when the divisional application was filed, because an application must be considered
pending as long as the applicant has the possibility of filing an appeal.
The Board of Appeal noted that the use of the term “pending” has several different
meanings in European law. Further, it acknowledged that present practice results in
the situation where an application ceases to be pending when a decision to refuse
the application is taken by the Examining Division, but that it would become pending
again should an admissible appeal be filed.
Therefore a definitive ruling has been sought from the Enlarged Board of Appeal on
when the pending status of an application ends. We will report when the Enlarged
Board’s decision issues in due course.
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