News
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.