J 0029/96 (Divisional application) 03-09-1997

Summary of Facts and Submissions

I. Application 95.... was filed by the Appellant on 18. December 1995, purportedly as a divisional of application 90.... 10 September 1990 ("the earlier application").

II. A notice under Rule 51(4) EPC on EPO Form 2004 dated 16. February 1995 had been sent the Appellant informing it of the text on which the Examining Division intended to grant a patent on the earlier application, and the appellant had indicated its approval of this text by letter.

III. By letter of 14 December 1995 to the European Patent Office on the earlier application the appellant wrote:

"We write to withdraw our approval of the text specified in the Official Communication under Rule 51(4) EPC dated 16 February 1995, in order that we can file a divisional application. In the event that the filing of this divisional application is not allowed, we request our previous approval (dated 31 May 1995) of the text specified in the Official Communication under Rule 51(4) EPC dated February 1995 stands."

By a communication dated 27 December 1995 on the earlier application the appellant was told that in this case the filing of a divisional application was not allowed any more.

IV. By a communication dated 25 March 1996 noting a loss of rights pursuant to Rule 69(1) EPC, the appellant was informed that the application in suit would not be treated as a European divisional application because it was filed after approval had been indicated in respect of the pending earlier European patent application in accordance with Rule 51(4) EPC (Rule 25(1)EPC). The Opinion of the Enlarged Board of Appeal G 10/92, was referred to. The appellant asked for a formal decision. This issued on 29 May 1996 stating that it had been decided that the application will not be treated as a divisional application as according to Rule 25(1) EPC a divisional can be filed up to the approval of the text in accordance with Rule 51(4) EPC in the parent application. This was confirmed by the Enlarged Board of Appeal in the opinion G 10/92.

V. The Appellant appealed by letter dated 16 July 1996, paying the appeal fee and submitting Grounds of Appeal received 24 September 1996. The Board issued a summons to oral proceedings dated 9 June 1997 accompanied by a communication. The appellant made further submissions in letters dated 1 July 1997 and 4 August 1997. In the latter letter an additional request was made that the following questions be referred to the Enlarged Board:

"1. Are the remarks in Paragraph 5 of the Decision of the Enlarged Board in G 10/92 as to subsequent withdrawal of approval by the applicant under Rule 51(4) to be regarded as ratio decidendi (and consequently binding in future cases) or merely obiter dicta (and consequentially not binding)?

2. If the remarks are merely obiter dicta, then under what circumstances may an applicant withdraw an existing approval given under Rule 51(4) in order to file a divisional application ?"

VI. Oral proceedings took place on 3 September 1997. On the issues remaining relevant at the oral proceedings, the arguments submitted in writing and at the oral proceedings were essentially that:

- The matter of the last date for a divisional is a matter of very great importance to applicants. The appellant, a US corporation, were under the impression that as under US patent law a divisional could be filed until the date of grant of the parent patent. By giving consent to the text for grant of the earlier application the appellant did therefore not intend to preclude the possibility of filing a divisional.

- The effect of withdrawal of approval was not covered explicitly by the Convention or the Rules. There was no prohibition as such on withdrawal of approval. This was in contrast to the prohibition on withdrawing the European patent application provided by Rule 14 EPC where a third party has shown that he has commenced proceedings concerning entitlement. Only a positive prohibition against withdrawal of approval should prevent approval being withdrawn and there was none. Accordingly such withdrawal should be effective, and the position would be as if no approval had been given. Accordingly on withdrawal of the approval on 14 December 1995, the appellant was free to file a divisional.

- Such a withdrawal would admittedly be a procedural device, but decision T 184/84 (OJ EPO 1986, 73), relating to a request by a proprietor that his patent be revoked, showed that such procedural devices were acceptable and performed a useful function.

- The sentence in point 5 of opinion G 10/92 "The mere fact that approval can be withdrawn does not however mean that the applicant who withdraws approval then acquires the right to file a divisional application" was not good law, the topic had only been partially considered by the Enlarged Board. Before deciding against the present appellant the matter should be referred to the Enlarged Board.

VII. The Appellant requested that the decision under appeal be set aside and the European patent application No. 95.... be treated as a divisional application; and as an ancillary request to refer to the Enlarged Board of Appeal the questions set out in the letter dated 4 August 1997 (see point V, supra).