July 2007
European Divisional Applications – A Decision, at Last!
The Enlarged Board of Appeal has just issued a decision (under the referral
G1/06) which answers important questions about the filing and amendment of
divisional applications at the European Patent Office.
In summary, the decision states that:
- If a divisional application includes subject matter which is
not disclosed in the parent application, then it is possible to
amend the divisional application to rectify this;
- A divisional application can be amended to remove subject matter
not disclosed in the parent application, even if the parent application
is no longer pending;
- It is possible to amend the claims of a divisional application
to direct them towards features which were not covered by the claims
of the ‘as filed’ parent application;
- Amendments to divisional applications still need to satisfy
other requirements of the European Patent Convention. For
instance, a divisional application cannot be validly amended in
such a way that it includes subject matter which was not in the
‘as filed’ parent application, and the claims of a divisional application
cannot be validly amended to cover unsearched subject matter which
is not linked to the subject matter of the original claims by a
single inventive concept;
- The content of any divisional application must be disclosed
in everyone of the applications preceding it. Thus, in a
sequence of divisional applications, the content of each divisional
application in the sequence must be disclosed in everyone of the
‘as filed’ applications preceding it; and
- The claims of a member of a sequence of divisional applications
do not need to be directed to subject matter which is within the
scope of the claims of all (or any) of the preceding applications
in the sequence.
In order to comply with all aspects of this (sensible) decision,
we now recommend that every divisional application should contain,
on filing, everything disclosed in the parent application. This
will allow further divisional applications to be filed from earlier
divisional applications in the sequence, because the content of each
divisional application will always be contained in each of the preceding
‘as filed’ applications.
The claims of a divisional application should be drafted, at the
outset, to cover the subject matter to be protected, even if that subject
matter was not contained in the original claims of the parent application.
Please do not hesitate to contact us here at Forresters if you have
any questions regarding the Enlarged Board’s decision, or indeed on
any other aspect of European intellectual property law and practice.