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that a divisional could only be filed until just before an earlier application was granted, refused or finally deemed withdrawn.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.