1.1 General remarks
1.1.1 Pendency of the earlier application
The parent application must be pending when a divisional application is filed. Reference is made in this regard to the observations in G 1/09 and J 18/09 as to what constitutes a pending application. In the case of an application filed as a divisional application from an application that is itself a divisional application, it is sufficient that the latter is still pending on the second divisional application's date of receipt.
An application is pending up to (but not on) the date that the European Patent Bulletin mentions the grant of the patent (OJ EPO 2002, 112). Rule 134 does not apply in this case. It is not possible to validly file a divisional application when the parent application has been finally refused, withdrawn or is deemed withdrawn (see also the paragraphs below).
If an application is deemed withdrawn due to non-observance of a time limit (e.g. following failure to pay the filing fee (Art. 78(2)), a renewal fee (Art. 86(1)), the fee for grant and publishing or the claims fees, or to file the translation of the claims (Rule 71(7)) in due time), the application is no longer pending when the non-observed time limit has expired.
If a renewal fee is not paid by the due date (Rule 51(1)), the application is pending up to the last day of the six-month period for payment of that fee with an additional fee (Rule 51(2), first sentence), and a divisional application may still be filed during this period – even if the fees are ultimately not paid. Deemed withdrawal of the application takes effect on expiry of the six-month period (Rule 51(2), second sentence).
Once the application is deemed withdrawn, a divisional application can only be validly filed if the loss of rights, as communicated under Rule 112(1), is subsequently remedied. In such a case, the application is deemed to have been pending throughout.
Depending on the non-observed time limit, the loss of rights may be remedied either by means of an allowable request for further processing (see E‑VIII, 2) or, where applicable, by a request for re-establishment of rights (see E‑VIII, 3). Furthermore, if the findings in the notice of loss of rights are considered inaccurate, the applicant may also request a decision under Rule 112(2) (see E‑VIII, 1.9.3). If the competent EPO body shares this opinion or if it gives an unfavourable decision that is subsequently overturned on appeal, no loss of rights will have ever occurred and the application will have been pending throughout (see J 4/11, reasons 22). The same applies if the appeal decision is set aside by the grant of a petition for review and the appeal proceedings are reopened under Art. 112a(5), with the consequence that the decision under Rule 112(2) is overturned.
If an application has been refused and no appeal has (yet) been filed, the application is still pending within the meaning of Rule 36(1) until expiry of the time limit for filing the notice of appeal (Art. 108), and a divisional application can be validly filed until this period expires (see G 1/09). Where the applicant does validly file a notice of appeal but fails to submit the written statement setting out the grounds of appeal, the refused application is pending until the time limit for filing the grounds of appeal under Art. 108 expires (see J 23/13). If the grounds of appeal are submitted in due time, the decision to refuse cannot take effect until the appeal proceedings are over. As the provisions relating to the filing of divisional applications also apply in appeal proceedings (Rule 100(1)), a divisional application may then be filed while such appeal proceedings are under way. If the appeal proceedings are reopened under Art. 112a(5), the application will have been pending throughout.
If the parent application is withdrawn by the applicant, a divisional application can be filed up to (i.e. including) the date on which the declaration of withdrawal is received by the EPO.
While proceedings are stayed in accordance with Rule 14(1) (see A‑IV, 2.2), divisional applications cannot be filed. Rule 14(1) constitutes a lex specialis with regard to the right to file a divisional on a pending application provided for in Rule 36(1) (see J 20/05 and G 1/09, reasons 3.2.5).
If a purported divisional application is filed when the parent application is not pending, the EPO will issue a communication under Rule 112(1) (see A‑IV, 1.1). The pendency of the earlier application is not a procedural deadline or time limit that would lead to a loss of rights in the event of non-compliance. Instead, it is a condition of a substantive nature for the filing of divisional applications (see G 1/09, reasons 3.2.3). Therefore, the provisions on re-establishment of rights and further processing do not apply to the filing of divisional applications (see J 10/01, reasons 15).