G 1/09: When is a patent application pending?

Once a patent application has been filed, and before it has been granted, refused or withdrawn, the application is considered to be "pending", i.e. awaiting some further action before a final decision is taken.  One thing that can only be done while a European application is pending is filing of a divisional application.  If the application has already been granted, or has been refused or withdrawn, or if the two year period under Rule 36 has passed, it is too late.  Or is it?

A strange situation arises in the case of an application that is refused at the end of oral proceedings at the EPO.  At that point, one would think, the application becomes no longer pending and, consequently, it is no longer possible to file a divisional.  However, if an appeal is then filed against the decision the application miraculously becomes pending again, because otherwise a final decision by an appeal board could not be taken.  

The question then is: is a European patent application that has been refused at oral proceedings still pending during the time allowed in which to file an appeal?  Does it even matter if an appeal is filed to make the application pending again? 

This was the situation for EP application 01102231.6, which was refused by the examining division in oral proceedings held on 23 November 2005.  On 14 December 2005, the applicant filed a divisional application, i.e. within the time allowed for filing an appeal against the decision. They did not, however, file an appeal in time.  

The EPO then took the view that, because the pending earlier application has been finally refused, the application could not be processed as a divisional.  The EPO issued a decision to this effect, which the applicant then did appeal against.  

In decision J 2/08, the board of appeal decided that they could not decide on the meaning of the word "pending", and instead decided to refer the following question to the Enlarged Board of Appeal:

"Is an application which has been refused by a decision of the Examining Division thereafter still pending within the meaning of Rule 25 EPC 1973 (Rule 36(2) EPC) until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed?"

At this point, the IPKat thought that there were good arguments either way, and could not decide himself which way the question should be answered.  It did seem, however, a bit odd that an application could be considered to have been pending only in retrospect, which would be the inevitable result of the EPO's apparent view in 2006.

After a mere 16 months of deliberation, the Enlarged Board have now issued their decision, which is available via the EP register for the divisional application 05027368.9, and presumably shortly to appear on the EPO decisions page.  To cut what is a long story short (there is much pontification in the decision, which the IPKat's readers can peruse and comment on at their leisure), the Enlarged Board concluded:

"[U]nder the EPC a patent application which has been refused by the Examining Division is thereafter still pending within the meaning of Rule 25 EPC 1973 until the expiry of the period for filing an appeal and, on the day after, is no longer pending if no appeal is filed.  The same conclusion applies to Rule 36(1) EPC 2000 both in its former and its current version."

Or, in other words, in answer to the actual question raised: yes.


We can all now breath a sigh of relief, and get back to all those divisional applications that have to be filed by Friday.  


The IPKat thanks Simon Roberts (BT) for the tip.