A number of recent decisions by the Boards of Appeal have called into question the EPO's practice with respect to the filing of divisional applications.

Nested Claims Requirement

In T 797/02, which was issued in 2004, the EPO's Board of Appeal attempted to limit the practice of filing cascading divisional applications (ie divisionals of divisionals), by stating that a "cascading" divisional application may only claim subject matter that was present in the claims of its direct parent application. This requirement has been referred to as the “nested claims” requirement. This decision went against usual EPO practice where a divisional application may claim any subject matter disclosed anywhere in the parent application. A subsequent decision, T90/03, supported this position, indicating that the content of a divisional application is determined solely by its claims, and not, as was the EPO's tested practice, by the entire application as filed.

Validity of Divisional Applications

In T 39/03, which was issued in August 2005, the Board of Appeal considered that a divisional application should be refused if it contained subject matter not present in the parent, without allowing the applicant to correct the disparity. The reason for this view was that the EPO believed it should not be possible to make a divisional application containing added matter "valid" long after it was filed, since this might compromise third party interests. This also contradicted longstanding EPO practice, that the specification of a divisional application containing subject matter not present in its parent, can be amended to remove such matter during prosecution.

The Board thought these issues were sufficiently serious to be put to the Enlarged Board of Appeal (EBA), which makes decisions on points of law that are considered to be unclear, and in particular where Boards of Appeal issue conflicting decisions. The Board in essence asked the EBA to consider whether a divisional application which extends beyond the content of the parent application can be amended later in order to make it a valid divisional application.

Conflicting Decision

In a subsequent decision, T 1409/05, another Board of Appeal criticised the various decisions referred to above. The board therefore asked the EBA to consider the question of whether the claims of a cascading divisional application must be nested with the claims of its divisional predecessors in order to be allowable.

Suspension of Proceedings

The EPO has indicated that, until the Enlarged Board of Appeal hands down its decision, all proceedings before examining and opposition divisions in which the decision depends entirely on the Enlarged Board’s decision will be suspended.

Comment

While the reasoning behind the decisions T 797/02 and T 39/03 can be criticised, it remains to be seen how these issues will be viewed by the Enlarged Board of Appeal. In the meantime, it is advisable to file any divisional application with the exact same description as the parent application as filed, and with claims which were included in the claims of the parent application. It is also preferable to file all divisional applications which are required at one time, rather than relying on the possibility of filing a divisional of the first divisional at a later date.