J 18/09: When is a Euro-PCT application pending?

Back in September 2010 the EPO Enlarged Board of Appeal issued its decision in G 1/09 (reported by the IPKat here). This answered the question of whether an application could be considered pending for the purpose of filing a divisional application after a decision had been made to refuse the application but before expiry of the period in which an appeal could be filed, when no appeal was in the end actually filed.  The Enlarged Board decided that an application was indeed still pending for the purpose of Rule 36 EPC, even if no appeal was filed.  This decision would theoretically give applicants a bit more breathing space in which to decide whether a divisional would be worth filing, rather than make sure one was filed before oral proceedings just in case.  However, the two year rule now in force under Rule 36 most probably makes the usefulness of this decision somewhat limited, since there will probably be very few, if any, cases where the two year period from a first examination report has not expired by the time the examining division finally refuses an application.

G 1/09 considered the question of whether an application was still pending, but did not answer the question (because it was not asked) of when an application is first pending before the EPO.  A suggestion (which, under English law, would probably be regarded as obiter dicta) was however made that, because Article 23(1) PCT prevents the EPO from processing a PCT application before the 31 month regional phase deadline, an application could not be considered to be pending before the EPO until after that date, for the purposes of Rule 36 EPC (see 3.2.5 of the reasons).

This suggestion has now been officially confirmed and developed further in J 18/09.  This decision, which will be published in the EPO Journal in due course, came out only shortly after G 1/09, but for some reason only appeared on the EPO website recently (and, largely due to laziness and prevarication, only appears here now).  It has already been commented on at length at K's law here.  In brief, the applicant decided to file a divisional application one day before the end of the 31 month deadline (it does not seem, by the way, that it would have made any difference if it had been after the deadline) and then did not enter the European regional phase for the claimed parent application, which had in the usual way been given an EP application number by the EPO.  The EPO receiving section decided that the application could not be dealt with as a divisional application because the international application could not be recognised as a pending European application since it had not validly entered the European regional phase.

The Board of Appeal agreed with the Receiving Section, finding in summary:

"An international application which does not fulfil the requirements according to Article 22 PCT for entering the European phase is not pending before the European Patent Office and therefore cannot be considered a pending earlier European patent application pursuant to Rule 36(1) EPC".

There were various reasons for finding this.  For international applications, proceedings before the PCT authorities were initiated as from the filing date, while proceedings before the EPO were initiated only from the day on which the requirements under Article 22(1) PCT for entering the regional phase were fulfilled, which includes paying the relevant fees (reasons, para. 13).  Allocating a European application number to the PCT application did not mean that the application was pending at the EPO, because this was just an administrative act to make it easier for the EPO to handle incoming applications (reasons, para. 17).  The fact that the EPO issued a notification of loss of rights relating to the parent application not proceeding into the EP regional phase in time did not mean that the application was pending.  Instead, the statement of deemed withdrawal was "not a constitutive procedural act but only a declaratory one with respect to the non-pendency of the proceedings before the European Patent Office" (reasons, para. 18).  Finally, there was no need to refer the question to the Enlarged Board, since the situation did not correspond with that leading to the referral in G 1/09 and the question could be answered directly from the provisions of the PCT and EPC (reasons, para. 20).

Although the decision might seem to be stating the obvious, it is an important one for those applicants who find that, due to Rule 164(2), they are unable to proceed at the EPO with the invention they really want, rather than the one that was searched during the international phase.  The only option in such cases, as many will already have suspected but until now could not be sure about, is to enter the EP regional phase for the parent application, paying all relevant fees, and then to file a divisional application for the application that is actually wanted and abandon the parent.  This may seem like a ridiculous way to proceed, but is unfortunately the way the EPO apparently wants it to be.