3.5.4 Pendency in case of grant of earlier application against which an appeal was filed

In J 5/08 the Legal Board had to decide whether the parent application was pending at the date of filing of the divisional application which took place after the appeal in the parent application had been filed but before the interlocutory revision decision by which the examining division revised the appealed decision (decision to grant referring to uncorrected text of claim 1). According to the Legal Board, a revision decision pursuant to Art. 109 EPC 1973 as such opened up the possibility that the patentability of the claimed subject-matter would be completely re-assessed. In the case at issue, the grant proceedings which had been terminated by the revision decision were still pending up to that date of the revision decision. The Legal Board concluded that in general where a decision is taken on the allowability of an appeal, an application was pending within the meaning of R. 25 EPC 1973 (now R. 36(1) EPC) at least up to the point in time when the decision was taken.

The Legal Board in J 5/08 further noted that there appeared to be diverging case law on the question of whether the suspensive effect of an appeal always had the consequence that the grant proceedings remained pending within the meaning of R. 25 EPC 1973 (R. 36(1) EPC) during the appeal proceedings. One line of decisions appeared to say that this was indeed the case (J 28/94 date: 1994-12-07, OJ 1995, 742 and J 3/04). However, a different view was taken in J 28/03, where the Legal Board had decided that the grant proceedings were to be considered as not having been pending during the appeal proceedings if the appeal was dismissed as inadmissible; the status of a divisional application filed while an appeal against the decision to grant a patent on the parent application was pending depended on the outcome of that appeal. In the more recent decision J 23/13 (albeit regarding an appeal against a refusal of the earlier application), the Legal Board referred to G 1/09 (OJ 2011, 336) and considered that the fact that the appeal was later rejected as inadmissible could not change the fact that, on the point in time when the divisional was filed, substantive rights were still in existence.