A problem with dates

Knowing when a divisional application (or, more correctly, a new application under section 15(9)) can be filed is a tricky business in the UK. I have written previously here about how applicants and their representatives can sometimes get caught out by assuming that the same rules apply to those at the EPO. Unlike at the EPO, where the general rule is that a divisional can be filed provided there is a current application pending, in the UK the latest date for filing a divisional is 3 months before the end of the compliance period, provided the application is still pending. This additional requirement can cause problems when applications are still being prosecuted close to the end of the compliance period, especially if it's not yet clear what will get allowed. 

According to Rule 30, the compliance period is 4 years and 6 months from the filing or priority date, or 12 months from the date of the first substantive examination report if this is later. The end of the period can be extended by 2 months under Rule 108 without providing any reasons, and may be extended further if evidence is provided. This means that, if the end of the compliance period is getting closer than 3 months, a divisional can still be filed if an extension request is filed in time. 

Let's say we are exactly one month away from the end of the compliance period, which for the sake of this example is 30 December 2024. Can we still file a divisional application? The current date is 30 November 2024, which is a Saturday. We have unfortunately left this rather late, as we knew a while back that a divisional application would be needed. As a busy patent attorney, however, we are used to dealing with things at the last minute and we are sure that all will be fine because we can just file a request for a 2 month extension at the same time as filing the divisional application and all will be in order. 

Unfortunately, things will not be in order. A further quirk of the UK patent system is that dates on which things are deemed to be filed differ depending on what they are and whether the Office is open. For the purposes of most things the Office is closed at the weekend, meaning that anything filed gets a deemed date of the next working day (see here). This applies to everything apart from new applications that do not claim priority, which get the filing date of the day on which they are actually filed, regardless of whether the Office is open. 

The upshot of all this is that the divisional application we filed on 30 November (which did not claim priority) gets that date of filing but the extension request we filed at the same time gets a deemed filing date of 2 December. The result is that the divisional was filed out of time because on the date of filing it was within only 1 month of the end of the compliance period. The only way to rescue this would be to get a further discretionary extension to the compliance period to allow another purported divisional application to be filed within time, but we would have to adequately explain what happened and why this would be justified. 

This all sounds very implausible and not something that should happen in the real world. Any competent patent attorney with a reliable docketing system will be warned in good time beforehand about the upcoming deadline for filing any divisional and will not resort to the risky business of filing things on a Saturday evening. This is not, however, a theoretical example but actually happened. The full details can be found in a recent decision from the UK IPO in BL O/0308/25. To prevent further embarrassment to the patent attorney involved, I will not go into any more detail. It is, however, highly recommended reading for all UK patent attorneys, and especially for those involved in marking papers for the patent attorney examinations. 

J 1/24: Can an application be pending after grant?

Do I actually need to be here?

According to Rule 36 EPC, a divisional application may be filed relating to any pending earlier European patent application. This used to mean that a divisional could only be filed until just before an earlier application was granted, refused or finally deemed withdrawn. There was a long running argument in the early 2000s about the effect of filing an appeal if an application was refused, which would usually happen at the end of oral proceedings before the Examining Division. Since some applicants wanted to make sure they didn't lose the opportunity to have another go, it used to be common to file a divisional application just before oral proceedings in case the application was refused because, once the application was refused, it would then no longer be pending. An alternative would be to file an appeal against the decision to refuse, which would have the effect of suspending the refusal while the appeal was pending. Preparing and filing an appeal just to get a divisional filed was, however, an expensive way to go about it.

The question then was whether it was actually necessary to file an appeal, or if a notice of appeal and then grounds of appeal would need to be filed for any divisional filed after the date of refusal to be valid. This resulted in conflicting decisions, with the Board in J 28/03 finding that the suspensive effect of an appeal depended on the outcome of the appeal, meaning that the status of a divisional could remain uncertain for years. This was finally resolved by a referral being made to the Enlarged Board in J 2/08, which asked whether a refused application could be considered pending within the meaning of Rule 36(1) EPC until expiry of the time for filing a notice of appeal, even if no appeal was actually filed. The Enlarged Board decided in G 1/09 that the answer to this was yes. Nervous applicants could thereafter go to Examining Division oral proceedings without fearing that their opportunity to file a divisional would be lost in the event the application got refused. 

So much for applications that were refused, but what about applications that are granted? A decision to grant a patent is issued by the EPO once the grant procedure is completed, i.e. claims translations are filed, renewals are up to date and the grant fee and any excess claims fees are paid. The decision states a future date on which the application will be granted and, as from that date, the application is no longer pending. The current understanding is that any divisional has to be filed at the latest by the day before the date of grant. But what happens if the applicant files a notice of appeal against the decision to grant? Is this even a valid thing to do, and if so does this suspend the effect of the decision to grant, allowing more time for a divisional application to be filed? 

Implausible though it appears, this actually happened in the case of European application 19209269.0, for which a decision to grant issued on 18 February 2021, indicating that the application would be granted on 17 March 2021. The applicant filed a notice of appeal on 16 April 2021, requesting that the decision to grant be set aside, which was followed by grounds of appeal filed on 18 June 2021, arguing that, due to a change in practice by the EPO regarding Article 84, the applicant was adversely affected by amendments made to the description before grant. In the interim, however, the EPO issued a communication indicating that the original decision to grant maintained its effect and remained valid, but (rather confusingly) that the date of publication of the mention of grant on 17 March 2021 would be deleted. The applicant had by then filed a divisional application which, if the original date of grant was maintained, would have been invalidly filed. 

The situation then developed further when, on 7 April 2022, the applicant withdrew its appeal and, on 18 May 2022, the EPO Receiving Section issued a notice of loss of rights on the divisional application, stating that it could not be proceeded with, referring to the decision of J 28/03 (see above).  The applicant then requested a decision, arguing that the application had been validly filed as a divisional. The decision, which was based on the reasoning from J 28/03, stated that the divisional had not been validly filed because the parent had already been granted and every further action was dependent on the outcome of the appeal proceedings. The suspensive effect of the appeal only interrupted the procedure until the appeal was withdrawn. The applicant then appealed this decision, which has now led to issuance of the Legal Board of Appeal decision in J 1/24. 

The question for the Board in this case was whether the parent application was still pending according to Rule 36 EPC when the divisional application was filed. Although there was no definition in the EPC about what constituted a pending application, it was established that decisions of the EPO "do not become final until expiry of the period for seeking ordinary means of legal redress" (reasons, point 7). This was decided in G 1/09 in relation to the period for filing a divisional application during the period for filing a notice of appeal following refusal of an application, although the Enlarged Board also indicated (in obiter comments) that the pending status of an application ceased on the day before mention of its grant was published. In this case, the Board found the principle in J 28/03 that the status of the parent application depended on the outcome of the appeal unconvincing, and instead found that an appeal did have suspensive effect regardless of whether this was against refusal or grant. This was supported by the reasoning in G 1/09 that an application that has been refused is still pending for the purpose of Rule 36 EPC during the period for filing a notice of appeal. The same conclusion should therefore apply to a decision to grant. Given that the date of grant was in this case deleted after the notice of appeal was filed, the parent application was still pending when the divisional application was filed, meaning that the divisional was validly filed regardless of the eventual outcome of the appeal. 

This new decision does not appear to fully resolve the issue of whether a divisional application can be filed after the date of grant in the same way as G 1/09 because it seems to rely on the date of grant being deleted as a result of a notice of appeal being filed. Therefore, unlike in the case of a decision to refuse an application, it appears that a notice of appeal still has to be filed for the application to be pending when a divisional is filed. It does, however, appear to give applicants a new possibility in the rare event of an applicant changing their mind on whether to file a divisional after it has already become too late. Will it be used in practice? I suspect rarely, but it's one to keep in the back pocket for those rare occasions when something does not go as planned. 

A Change in Practice for Compliance Periods and 'Divisionals' in the UK

The way that 'divisional' applications are treated in the UK is a bit different to how they are treated at the EPO. This sometimes catches applicants out, which I wrote about a while ago in this post. In brief, unlike at the EPO where the rule is that a divisional application can be filed as long as there is a pending parent application (with some additional leeway for the time allowed for filing an appeal against refusal), Rule 19(2)(b) of the UK 2007 Patents Rules requires a new application under section 15(9) (commonly termed a divisional application) to be filed before the period ending three months before the compliance date of the earlier application. The compliance date is defined by Rule 30 as the end of the period of four years and six months from the date of filing (or the earliest priority date) or, if later, twelve months from the date of the first examination report. This can sometimes catch applicants out if they find themselves running up to the end of the compliance period and, with their EPO frame of mind, thinking that they still have time to file a divisional while the parent is still pending. Although extensions are available to the compliance period under Rule 108, any as of right extension is limited to only two months. It is therefore necessary to rely on the discretion of the examiner to get a divisional validly filed if you are already less then two months away from the compliance date. 

Practice at the UK IPO has been to take any extension to the compliance period applied to the parent application as being also applied to any divisional application. The effect of this has been that, in some cases, applicants can take advantage of repeated extensions to the compliance period and still file a divisional application if things are not going their way just to keep something pending. An example of this is in decision BL O/610/22 (Wei Xu), where the applicant filed repeated requests under Rule 108 to keep extending the compliance period and filed several divisional applications, keeping prosecution going on multiple related applications for years. The IPO eventually grew tired of this and refused to grant any further requests under Rule 108 because the applicant was not making any realistic attempts to progress the applications. It looks like this kind of practice, if not this actual case, has now made the IPO look again at how the compliance period should be determined for divisional applications. The IPO has recently issued some statutory guidance on how they will be determining the compliance period as from 1 May 2023. This states:

In accordance with r.30(3)(b) of the Patents Rules 2007 (as amended), from Monday 1st May 2023, the IPO will attribute to a divisional application filed on that date or after, a compliance period of:

• four years and six months beginning immediately after

(i) where there is no declared priority date, the date of filing of the application, or

(ii) where there is a declared priority date, that date; or

• if it expires later, the period of twelve months beginning immediately after the date on which the first substantive examination report is sent to the applicant, in relation to the earlier parent application.

This change in practice will mean that the IPO will no longer treat the compliance period of the earlier parent application that has been extended under r.108(2)/r.108(3) as the un-extended compliance period of the divisional application. Extensions to the compliance period of both parent and divisional applications will continue to be available under r.108 in the normal way.

The key part of the guidance is underlined above. The effect of this is that the practice of repeated extensions will no longer allow applicants to keep the option open of filing divisionals. This will also very tightly compress timescales for getting divisionals allowed, relying more on the IPO's discretion to allow extensions. Applicants and their attorneys, particularly those used to the more generous provisions at the EPO or USPTO, should pay close attention. 

UK Divisional Applications - how (not) to get caught out

The UK Patents Act 1977 has a particular, and some may say peculiar, way of dealing with so-called divisional applications (which, for the pedants among you, are not referred to as such in the Act but only by reference to section 15(9); see more on the subject here). For those unfamiliar with UK practice, this might on occasion result in an applicant being caught out while prosecuting a parent application, unaware that the deadline has already passed. Instead of having a (reasonably) clear deadline by which a divisional application must be filed, which at the EPO is the latest of the day before the parent application is granted or the end of 24 months from the earliest relevant examination report (Rule 36 EPC), the UK defines the latest date for filing a divisional application with reference to the compliance period of the parent. Specifically, in the case where an application is not allowed straight away, according to rule 19(3) a divisional application must be filed no later than 3 months before the end of the compliance period. The deadline can therefore easily be missed if the applicant is still trying to get the parent application granted towards the end of the compliance period. Given delays in the UK examination system, it is now quite common to have only 12 months from the date of the first examination report to the end of the compliance period, as a result of the extension allowed under rule 30(1)(b), 9 months of which can easily be used up with only a few rounds of correspondence.

Although the compliance period can be extended as of right by two months under rule 108(2), this is clearly not enough if the compliance date is already less than a month away. In such a case, as further extensions can only be allowed if an as of right extension has already been requested, the applicant has to rely on the discretion of the comptroller. This was the situation for Knauf Insulation's application GB1219243.1, filed out of earlier application GB0807777.8, which resulted in a recent decision from the UK IPO, BL O/098/13. The applicant, as represented by a European attorney based in France, filed the new application after the end of the period under rule 19(3)(b) (3 months before the compliance date), following several rounds of examination in which various issues including lack of unity were raised. Shortly after filing the application the applicant requested a discretionary extension of two months to the compliance period under rule 108(3), but the examiner indicated that this would not assist because the extension would not bring the date of filing of the application within 3 months of the extended compliance date, and discretion to allow the late filing under rule108(1) could only be exercised in exceptional circumstances. The parent application was then granted, while search and examination of the new application was deferred pending a decision on whether it could be treated as a divisional application.

The hearing officer indicated that there were two questions to be answered, the first being whether discretion should be exercised under rule 108(1) to extend the date by which the divisional application had to be filed, the second being whether discretion should be exercised to extend the compliance period under rule 108(3) which, under rule 30(3)(b), determined the compliance period for putting the divisional application in order. In relation to whether the comptroller's discretion may be exercised in favour of extensions under rules 108(1) and (3), the hearing officer referred to Ferguson's Application BL O/272/09, which indicated that the test to allow late filing of a divisional application should be consistent with the test for exercising discretion to allow a divisional application to be filed out of time, i.e. that the applicant needed to demonstrate that the circumstances were exceptional and that the applicant had been properly diligent.

The hearing officer accepted the arguments put forward by the applicant that there had been a genuine and serious attempt at all times throughout prosecution of the parent application to progress the application through to grant, and that any delay in resolving objections raised by the examiner was largely inevitable. The circumstances that led the divisional application to be filed so late were therefore considered by the hearing officer to be exceptional, and the applicant should not lose out when serious and consistent attempts had been made to progress the application through to grant. The hearing officer ordered the compliance period to be extended under rule 108(3), and the period for filing the divisional application to be further extended under rule 108(1), with the result that the divisional application had the same compliance date as the parent. A further discretionary extension to the compliance period would be required to put any amendments into effect, which the hearing officer indicated would be allowed.

Although the decision in this case came out in favour of the applicant, it is clearly not a process that is easy or cheap to go through and a positive outcome is by no means guaranteed. It does, however, appear that as long as an applicant pursues their parent application diligently, an apparent schoolboy error of missing the usual deadline for filing divisional applications can be forgiven. I am sure that the attorney in this case will not allow the same mistake to happen again, and will be paying more attention in future to the differences between EPO and UK IPO practice regarding divisionals. 

Article 54(3) and EP Divisionals

According to Article 54 EPC, an invention is new if it does not form part of the state of the art, which is everything that has been made available to the public before the filing date of the application.  Under Article 54(3), the state of the art also includes the content of another European application having a filing date before that of the application but which was published on or after the filing date of the application.  This second definition is however only used when considering novelty, and not for inventive step under Article 56.

If a European application validly claims priority to an earlier filed application, this has the effect that the filing date of the earlier application counts as the filing date of the application.  This applies to both Article 54(2) and (3). 

All this means that an earlier (first) European application could be used as prior art for a later filed (second) European application that claims priority to the first one, if that priority claim is invalid (and provided the first application is also published).  This could happen, for example, if the first application disclosed and claimed only specific examples, while the second application claimed an invention more generally.  Claims of broader scope might therefore not have a valid claim to priority.  Consequently the earlier application, disclosing examples falling within the scope of the later broader claim, could provide a novelty-defeating prior disclosure.  

Normally this would be correctable, as it is usual to make sure that all of the material from the first application is included in the second.  The applicant could, for example, narrow the scope of the claims in the second application so that they do have a valid claim to priority.  In some cases, however, this might not be possible, or desirable.  To come up with a far-fetched hypothetical situation to illustrate this, let's say that a first EP application discloses an invention incorporating a range from 0.325 to 0.415 (the units don't matter), while a second EP application, claiming priority to the first application, discloses and claims only a range from 0.330 to 0.415.  The claim to priority is invalid because the range in the second application is not present in the first one, meaning that the claim to priority is not for the same invention (Article 87(1)(b) EPC).  The first application, having an earlier filing date and having been published after the filing date of the second, is therefore prior art under Article 54(3).  Since the first application discloses a range that entirely encompasses the second, and the difference between the two ranges is very small, the claims in the second application are not novel (although this is possibly an arguable point). 

Although far-fetched, this is the actual situation that gave rise to decision T 680/08, which issued in April 2010. The decision has already been commented on by others here and here.  The issue has also arisen before in T 1443/05. In both cases, the solution to the problem was (possibly dubiously) to include a disclaimer.

Cases where the priority filing can cause problems for a later filed application may be fairly rare.  However, the principle in T 680/08 might, according to some interpretations, apply also for divisional applications.  According to Malcolm Lawrence and Marc Wilkinson of HLBBshaw, a divisional application could effectively 'poison' its own parent if it turns out that the parent is not entitled to priority.  The reasoning (which, in the HLBBshaw article, is very long-winded) is based on the divisional application being citable under Article 54(3) against its parent as a result of it having an earlier filing date (due to the priority claim) than the parent application (which lacks the priority date).  The ramifications for this would, naturally, be quite serious. But is this reasoning even plausible?  

The issue also came up during opposition proceedings relating to EP0846450, although was not key to the patent being eventually revoked.  The question of whether a priority document could be used as Article 54(3) prior art was considered by an expert called by the patentee, Professor Dr.-Ing. Ulrich Vollrath, a professor of patent law at the Rheinian-Westfalian University of Technology (his contribution, which is well worth reading, can be found here).  When asked whether a part of a European patent application enjoying priority of an earlier US application under Article 87 or 89 EPC could be novelty-destroying for claims of the same application not enjoying priority, his firm answer was no for the reason that there had to be two applications for there to be a conflict.  However, in answer to a further question of whether the outcome would be any different if the claims not enjoying priority had been divided out of the European application enjoying priority, his answer was also no because, in the case of divisional applications, for the purposes of examination of priorities and the resulting effects the parent and divisional applications had to be considered as if all claims remained in the same application.  There would therefore be no earlier application to be considered, as both would be effectively the same application.  Both had to be considered to be interchangeable, having equal footing as a result of a procedural split between them.  What was admissible in the former application could not become inadmissible just by filing a divisional.

I am much more persuaded by the arguments of Professor Vollrath than those of Messrs Lawrence and Wilkinson.  However, I may be wrong.  What are the chances that an EPO board of appeal, tasked with a suitable fact situation, would consider a divisional application to be Article 54(3) art for its own parent?  I would think very slim, but not impossible.  What do you think?

UPDATE 18 August 2015: The above post has been cited in a referral to the Enlarged Board of Appeal regarding the issue of partial priority and poisonous divisionals. For more information see my recent post here.