Sense prevails in EPO Divisionals practice

The IPKat brings news of a recent European Patent Office Enlarged Board of Appeals decision which determined the extent to which Divisional Patent applications can be narrowed, even after the parent application has lapsed.

The result makes inherent sense – Divisionals can be narrowed, even if the parent has lapsed and the normal rules of amendment apply as they would to non-Divisionals. Put another way – patentees can feel confident to file European Divisionals with broader disclosure than the parent, now knowing that later narrowing amendments will be allowed.

European Divisionals can been used to great strategic effect (to have a second bite of the prosecution cherry, to buy time, etc.) and are part of normal practice before many patent offices. There seems to me to be scant justification to treat them any differently to the parent.

4 Comments on “Sense prevails in EPO Divisionals practice

  1. I’m not sure it’s correct to say that patentees can feel confident to file divisionals with broader disclosure (I presume you mean additional subject-matter).  The Examining Division is good, but not infallible, and the Article 123(2)/(3) trap still exists.

  2. Thanks very much, MartinGreat point.  I should have said – ‘having filed European Divisionals with added subject matter, patentees will now comfort from knowing that later narrowing amendments
    will be allowed’.Or would you characterize it differently?(For reader’s ease of reference, Art 123(2) & (3) state:(2) A European
    patent application or a European patent may not be amended in such a
    way that it contains subject-matter which extends beyond the content of
    the application as filed.(3) The claims
    of the European patent may not be amended during opposition proceedings
    in such a way as to extend the protection conferred.

  3. That’s quite true.  Applicants who have filed divisional applications which the EPO considers include additional subject-matter can breathe a sigh of relief.  They will be permitted to amend to remove the additional subject-matter without losing divisional status (as was the practice before the referral to the Enlarged Board).However, a distinction should be drawn between the practices of some regimes, on the one hand, which allow the inclusion of further subject matter, perhaps considering it to have a later priority date, and of the EPO, on the other hand, where the presence of additional subject-matter in a patent is a ground for (potentially incurable) invalidity.

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