Enlarged Board of Appeal confirms established practice regarding filing of divisional applications and rejects attempts to restrict this practice as suggested by earlier Board of Appeal decisions

On June 28, 2007, the Enlarged Board of Appeal issued Decision G1/06 clarifying the legal situation regarding filing and amending of divisional applications.

In accordance with the established prior practice before the EPO, the Enlarged Board of Appeal confirmed that it is admissible to file a sequence of divisional applications where each further divisional application is divided out from its respective preceding divisional application. Also in compliance with the established prior practice, the Enlarged Board of Appeal found that the contents of each one of such a sequence of divisional applications must be disclosed in each of the preceding applications in the sequence as filed.

Furthermore, the Enlarged Board of Appeal confirmed that a divisional application containing added subject matter not originally disclosed in the parent application is not deemed invalid, but rather the Applicant should have an opportunity to amend such application in order to comply with Articles 76(1) and 123(2) EPC. This possibility to amend the divisional application is thereby independent of the fate of the preceding application and in particular independent of the fact whether or not the previous application was granted or rejected in the meantime.

This further clarification that a divisional application may be amended later in order to make the application compliant with Articles 76(1), 123(2) EPC in situations where the divisional application originally contained subject matter not disclosed in the parent application, has particular relevance for the everyday practice: Applicants sometimes choose to file divisional applications in situations where for the parent case a narrow claim set is accepted with the goal to achieve early grant of a patent. In such a situation, Applicants often choose to prosecute broader and preferred claims by means of a divisional application filed before final grant of the parent case. During examination those broader claims may later turn out to have a wider scope than what is disclosed in the originally filed application, i.e not to comply with Article 123(2) EPC. The Enlarged Board of Appeal has now ruled that in such a case, the Applicant may amend the objected claim set in order to overcome such a disclosure problem, thereby avoiding that the application is deemed invalid.