The recently released judgment in J1/24 (relating to EP 3660979B1), from the Legal Board of Appeal at the European Patent Office (EPO) is a divisive judgment, which could potentially have far-reaching implications.
Existing legislation ignored/overturned by J1/24
The European Patent Convention is clear that a divisional application must be filed from a pending parent application, as dictated by Article 76 EPC, Rule 36(1) EPC. Traditionally potential divisional applicants would have therefore been aware that the final deadline to file a divisional patent in view of the grant of the parent is: “up to but not including the day of mention of grant” in the European Patent Bulletin (G1/09). Prior to the judgment in J1/24, once an applicant missed this deadline there appeared to be no room for mitigation.
However, EPO case law indicates that “pending” in terms of a patent application “is a condition, not a time limit” J24/03, J10/01– reason 15 and also the EPO Guidelines 2024, Part A, Chapter IV, 1.1.1. When one bears this in mind, whilst taking into account Article 106(1) EPC, which states that in principle an application will be pending again if a notice of appeal is filed, one can start to apprehend how Samsung Electronics, the Applicant in J1/24, managed to circumvent this alleged concrete divisional filing deadline and successfully file a divisional application after the mention of grant of the parent.
Whether the Board meant this or not, we are now left with a situation where an applicant may file a valid appeal against its own successful grant decision, keep the application pending and thus have a longer period of time to file a divisional. This once un-circumnavigable deadline of one day prior to the mention of grant is suddenly a grey area.
The above line of argumentation has been tried before, in J28/03, but was ultimately unsuccessful. This is because the Board stated that ”an appeal against [a] granting patent will only restore pendency of parent if [the] appeal is not “trivially inadmissible”.
The question now arises, how do J1/24 and J28/03 differ for the former appeal to have succeeded whilst the latter was rejected? Further, in what situations is an appeal valid and therefore not deemed as “trivially inadmissible”?
Comparisons between J1/24 and J28/03
J28/03 dates back to the early 2000s. The applicant, having had the grant of their patent mentioned in the EP bulletin, appealed the decision to grant. Whilst the board ruminated on their judgment, the applicant filed a divisional arguing it should have been validly filed as the parent application should be perceived as pending until the Board of Appeal came to their judgment.
However, once deferred to the Board of Appeal, the divisional filing was adjudged to be invalid because, at the stage at which the EPO indicated that they intended to grant a patent, the applicant had approved the text for grant. Thus, the applicant was not “adversely affected” by the decision to grant, resulting in the appeal being labelled as “trivially inadmissible” and rejected.
Article 107 EPC defines persons that are entitled to appeal as those who are involved in proceedings before the EPO and are adversely affected by a decision.
For example, in opposition proceedings, it is clear who the adversely affected party is. If, for example, a patent is revoked in its entirety, only the proprietor is adversely affected. Conversely, if the patent is upheld as granted, only the opponent is adversely affected. If, however, the patent is maintained in an amended form based on an auxiliary claim request, both the proprietor and the opponent are adversely affected. The proprietor is adversely affected because the patent as granted has been revoked, whilst the opponent is also adversely affected because the patent has not been revoked in its entirety.
If a decision is favourable for a particular party they are unable to appeal it. So, one may wonder why, in J1/24, the applicant was able to argue that they were adversely affected by a decision to grant their own patent. Would a party in this position ever really be “adversely affected”? This is particularly the case, given that an applicant must actively approve the text for grant before a decision to grant is issued.
In J1/24, the applicant relied on an erroneous reference to a figure in view of revised guidelines for examination that were issued after they approved the text for grant (see below). This is clear from the applicant’s Statement of Grounds of Appeal , which read:
It may be surprising to some that an amendment to the EPO Guidelines would be enough to render an applicant adversely affected, particularly as the EPO Guidelines themselves have no legal authority.
Does this open the door for applicants to take advantage and come up with creative ways to argue that they have been adversely affected, to effectively extend the time in which they are able to file divisional applications, or to file a divisional application when the original deadline of the day before grant had been missed in error?
Although it is certainly interesting, we view this decision with caution and would certainly not recommend relying on the strategy of appealing a decision to grant to buy extra time to file a divisional application, particularly as a very specific set of circumstances convened to allow the applicant to argue that they were adversely affected, and thus appeal the grant of their own patent.
That said, it may be something to keep in the mind as a last resort if an applicant is ever in the unfortunate position of having missed a divisional deadline, or if they have changed their mind about filing a divisional application, on a particularly important case.
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J1/24 is a poor decision but this article misses some of the detail of the case and overlooks relevant case law. First, the article overlooks the fact that you do not need to file a statement of grounds to be able to file a divisional application. The grounds of appeal were not relevant at all in J1/24. The fundamental point in J1/24 is that an appeal against the decision to grant isn’t a “clearly inadmissible” appeal in the sense of G2/19, because there is a body of case law defining situations where a patent applicant is adversely affected and is in principle able to appeal (Case Law, V-A 2.4.2 (b)), and the simple filing of a notice of appeal against the decision to grant therefore has suspensive effect. G2/19 and J1/24 distinguish between a non-allowable appeal, which does have suspensive effect, and a clearly inadmissible appeal, which does not. Following J1/24, an applicant can file the notice of appeal, file a divisional application making use of the suspensive effect and then withdraw the appeal without the grounds ever being filed. Whether the applicant’s arguments based on the guidelines were convincing is not relevant because these are factors that determine the allowability of the appeal rather than the admissibility. In practical terms, the only way J1/24 could be overturned is if a receiving section decided to refuse to afford divisional status to a divisional application filed after an appeal against the decision to grant, but why would they do this when they have been overturned in this case?
J1/24 drew the attention to incoherent aspects of J28/03, but it does not appear to have clarified several aspects, for example what means suspensive effect, or whether an inadmissible appeal existed or not until decided to be inadmissible.
Looking at reason 10.2, which refers to G1/09, the conclusion would appear to be that there is not even a need to file an appeal: the application would remain pending during the period for appeal. Why not.
The Legal Board did not consider Samsung’s appeal against the grant decision to be admissible. (No decision on the admissiblity of that appeal was ever taken because the appeal was withdrawn. There is little doubt that the appeal would have been found inadmissible had it not been withdrawn.)
The position of the Legal Board seems to be that an appeal by the applicant against a grant decision always has suspensive effect (even if evidently inadmissible), with the result that the application becomes pending again and that a divisional application can be validly filed.
A confusing part of J 1/24 is the discussion about the retrospective “deletion” by the EPO of the date of the publication of the mention of the grant. It is difficult to see how such an administrative act by the EPO could possibly result in the cancellation of the legal effect of the grant decision and the application becoming pending again. It can only have been the suspensive effect of the appeal (Art. 106(1) EPC) that achieved that.
Arguably the previous case law on the suspensive effect of an appeal was inconsistent. An appeal by the applicant against a refusal decision has suspensive effect even if the appeal is inadmissible. Before J 1/24, an appeal against a grant decision had suspensive effect only if the appeal was admissible (which can only be the case if the applicant did not agree to the granted text).
On the other hand, there are other exceptions to the suspensive effect of an appeal. According to G 2/19, an appeal by a third party has no suspensive effect.
The number of cases in which the applicant is filing an appeal AFTER grant is rather limited. On the other hand a trivial appeal after grant should not become the loophole allowing the filing of divisional applications.
The Guidelines are presently amended once a year, but not all amendments are of the king which justified the appeal after grant.
No need to wait after grant to file an appeal which can easily be deemed not admissible. There are ways to reach postponement of a grant, for instance disagreeing with the text proposed in the communication under R 71(3) or missing the deadline for filing the translations and paying the granting fee. A fee for further processing is much cheaper than a fee for appeal.
It should be avoided that the EPO once amends again R 36(1) in view of a potential misuse of divisional applications as happened in the past. By the way, the extra fee for further generation divisional applications is not a deterrent for any misuse, it is peanuts.