F. Divisional applications

In J 12/18, interpreting Art. 76(2) EPC in accordance with the recognised rules of interpretation, the Legal Board confirmed that under this provision only those states that had been designated in the earlier application at the time of filing the divisional could be designated in the divisional. A designated state forfeited in the parent application at the time of filing the divisional could not be revived in the divisional one. The fact that the application was referred to as a "divisional" application under Art. 76(2) EPC implied by definition that it was divided from the earlier application and thus at the time of filing it could not be broader than the earlier application it derived from. Only after the filing of the divisional application was its fate separated from changes concerning the earlier application. Likewise, in the context of the required systematic interpretation of Art. 76(2) EPC the Legal Board noted that the nature of a divisional application, which was derived from a parent application thereby benefiting from the parent's date of filing and priority rights, implied that the divisional could not be broader than the parent application, neither its subject-matter (Art. 76(1) EPC) nor its geographical cover. Thus Art. 79 EPC had to be considered. According to Art. 79(3) EPC the applicant could withdraw the designation of a Contracting State at any time up to the grant of the European patent. However, further possibilities, in particular the addition of a Contracting State, which had previously been excluded by withdrawal, were not foreseen in Art. 79 EPC. A revival of the withdrawn designation could only be achieved under particular circumstances if the requirements for a correction under R. 139 EPC were fulfilled. This, for reasons of consistency, had to apply also to a divisional derived from the earlier application. (See also the parallel decisions J 13/18, J 14/18 and J 3/20, which contain identical reasoning on this point.) See also chapter V.A.6.6. "Submissions made in the statement of grounds or the reply – first stage of the appeal proceedings – Article 12(3) to (6) RPBA 2020" below.

ABl. EPA 2020, Zusatzpublikation 4
OJ EPO 2020, Supplementary publication 4
JO OEB 2020, Publication supplémentaire 4