epi Information 2/2009

68 Articles Information 2/2009
motivation, of all applicants would probably be unpopular.
Discussion
What are we facing now in view of T 0307/03? Is there
going to be another chain of deplorable decisions
restricting applicants’ rights as in the run-up to G1/05?
Is there then, as soon as pressure has risen sufficiently,
going to be another decision of the Enlarged Board of
Appeal in order to overturn this chain of decisions as
happened with G1/05? Will it again be found that the
referring decisions lack a legal basis (ultra vires) for
defining any additional requirements to be imposed on
divisional applications? 14 And are we then going to face
another amendment of the Implementing Regulations
concerning divisional applications which is further going
to severely restrict the applicant’s possibilities?
Let’s hope not.
Decision T 0307/03 was taken at a time when the
change in the Implementing Regulations to enter into
force on 1.4.2010 was not yet decided. 15 Indeed the first
office action to the parent application in this specific case
was issued more than 24 months before the divisional
application was filed. Under the new Implementing
Regulations there could not have been a divisional
application in this specific case. The new and coming
Implementing Regulations are a severe restriction to the
possibilities of applicants to get well-deserved protection
for their inventions. The change to the Implementing
Regulations was introduced due to a very few users who
were allegedly abusing the system but the change will be
affecting all users. Further changes with further restrictions
are certainly undesirable.
Hopefully therefore the same route will be taken by
the Boards of Appeal as with T 998/98, where the
decision was criticised and simply not followed by later
decisions. 16 If indeed abuse of the system is made by
filing divisional applications claiming the same subject
matter as a refused or revoked parent, the European
Patent Office nevertheless gets the fees and may simply
refuse the divisional application by referring to the
decision in the parent case.
Conclusion
It remains unclear what precisely may be the fundamental
objection to double patenting. Double patenting is no
ground for refusal of the grant of a European patent, and
T 307/03 should not be followed. If national legislatures
find double patenting of European patents to be objectionable
national legislation against it should use
national criteria, as is permitted by A 139(3)EPC in
conjunction with A 139(2) EPC.
14 See G1/05, reasons 13.5
15 Decision of the administrative Council dated 25.3.2009 amending, among
others, R 36 of the Implementing Regulations. 16 See T15/05 and T 5/05.