G 1/05 and G 1/06
G 1/05 and G 1/06 are decisions of the Enlarged Board of Appeal of the European Patent Office that were issued on 28 June 2007 and answer questions relating to divisional applications under the European Patent Convention. The two decisions were published in the Official Journal of the EPO in May 2008.
Background
Article 76, second sentence, EPC states that a divisional applicationQuestions
Two similar sets of legal questions have been referred to the Enlarged Board of Appeal and have been considered by the Board in consolidated proceedings.In case T 39/03, Technical Board of Appeal 3.4.02 referred the following questions to the Enlarged Board of Appeal :
In case T 1409/05, Technical Board of Appeal 3.4.03 referred the following questions to the Enlarged Board of Appeal :
Reasoning
The Enlarged Board of Appeal held that non-compliance of a patent application with a substantive requirement for grant, such as the requirement regarding the content of a divisional application when filed, does not cause the application to be "invalid", but only leads to its refusal "if the deficiency is incurable or is not removed by amendment". Such non-compliance "cannot raise an automatic presumption that the application is to be refused without any prior possibility of amendment."The Board further held that Article 76, second sentence, EPC had a double purpose:
- preventing applicants from putting into a divisional application new matter which could be objectionable under national security considerations, and
- setting up the substantive requirement for the patentability of divisional applications that they may not contain added matter in relation to their parent application,
Divisional applications are to be treated in the same manner as ordinary applications and subject to the same requirements, unless specific provisions of the EPC require something different. In other words, a divisional application is a new application which is separate and independent from the parent application, if not specifically provided otherwise.
Regarding the sequences of divisional applications, the Board held that:
Decisions
The Enlarged Board eventually decided in G 1/05 that:In G1/06, the Board answered to the question in the affirmative:
The whole contents of each preceding divisional application in a sequence may be included in a new divisional application and an applicant is not restricted only to subject matter that was encompassed by the claims of a preceding divisional. In reaching this decision, the EBA confirmed that subject matter which was omitted on filing one member in a sequence of divisional applications cannot be reintroduced later and, conversely, that subject matter which was introduced on filing one member in the sequence cannot be maintained.