J 1/24 gave limited hope that filing a divisional application after grant of the parent application might be possible. A recent decision in Board of Appeal case T 700/25 has cast some shade on that earlier decision.
Background
It was well established that a divisional patent application must be filed while its parent application is pending, and hence before the parent grants. However, in J 1/24, filing a divisional application after the parent application had granted was allowed, although in a particular circumstance.
In the case leading to J1/24, an applicant filed a notice of appeal against a decision to grant a patent, arguing a correction was needed to meet the clarity requirements of Article 84 EPC. This led to the EPO deleting the mention of grant issued on the application. The applicant then filed a divisional application and grounds of appeal before then withdrawing the appeal.
An earlier decision (J 28/03) suggested that the validity of any divisional filed during appeal proceedings relied on the outcome of the appeal proceedings – the Board of Appeal must allow the Appeal before a first instance EPO division can decide on the validity of the divisional filing.
This reasoning was rejected in J 1/24 where it was argued that the appeal effectively suspended the effect of the decision to grant. It was argued that with grant not effective at the time of the divisional filing, a divisional application could be filed validly and the eventual outcome of the appeal would be irrelevant.
The reasoning of J 1/24 was treated with some scepticism and few, if any, patent attorneys suggested relying on the decision to delay filing a divisional application until after grant of the patent application. Rather, the decision was generally seen as merely a possible recovery route if the usual deadline for filing a divisional (before grant of the parent) had been missed.
Different circumstances in T 700/25
The present case, T 700/25, differed from J 1/24 in that:
The comments of the Board of Appeal in T 700/25
Although based on different facts, the Board of Appeal still offered its thoughts on J 1/24 which were not supportive.
The Board in T 700/25 said “an appeal of the Examining Division’s decision to grant a patent, in order that the application again become ‘pending’, within the meaning of Rule 36(1) EPC, is manifestly inadmissible” as “an applicant is not adversely affected by a decision to grant that accedes to the applicant’s requests. Therefore, such an applicant is not entitled under Article 107, first sentence, EPC to appeal such a decision.” It was also explicitly stated that “The Board follows … the rationale of decision J 28/03, and not that of decision J 1/24.”
In T 700/25, the Board also said that, “Contrary to decision J 1/24, an appeal of a decision to grant cannot be assumed validly to exist … an applicant appealing a decision to grant must justify their entitlement to appeal and set out why that decision is not in conformity with the applicant’s requests or why it otherwise negatively affects them.”
The Board added that, “If no appeal of a decision to grant is filed on the day before the publication of the grant in the European Patent Bulletin, the application underlying the patent is no longer pending … the suspensive effect of a subsequent appeal cannot remove these effects, since this would amount to cancellation of the contested decision. Indeed, the resumption of examination proceedings is the relief sought by the appeal of the decision to grant”.
Takeaway
The takeaway from this case is fairly obvious and unchanged from before: if you want to file a divisional application, make sure you do so before the parent application grants!
If you end up in an unfortunate position where you want to file a divisional application and the parent has already granted, then J 1/24 still offers limited hope that a divisional may be possible. In such a situation, T 700/25 provides some pointers as to how to improve the chances of success:
For further details, please contact Dr Nigel Tucker or your usual Boult advisor.
