Divide and conquer!
A proposal for an amended Rule 36 EPC

H. Vissel(DE)

When amending procedural provisions it is very important to take all participants (i.e., the parties, including the applicants, patent owners, opponents and third parties; the representatives; and bodies of the EPO, including the Receiving Section, Search Divisions, Examining Divisions, Opposition Divisions, Legal Division, the Boards of Appeal and the Enlarged Board of Appeal) involved in the proceedings before the EPO into account when striving to increase procedural efficiency and, in particular, reducing administrative burden.

For example, it seems to be almost universally acknowledged that the Rules of Procedure of the Boards of Appeal (RoPBoA)^{OJ EPO 2019, A63.} in force since January 1, 2020^{Art. 24(1) RoPBoA.} might (but not necessarily^{http://patentblog.kluweriplaw.com/2019/12/16/happy-new-year-entry-into-force-of-the-new-rules-of-procedure-of-the-boards-of-appeal/;
Anetsberger et al., "Increasing Formalism in Appeal Proceedings - The EPO Boards of Appeal Headed to a Mere Reviewing Instance?", epi Information 2015, 63; Thesen, "Get Your Act Together - The New Rules of Procedure of the Boards of Appeal are coming", epi Information 2020, 8.}) increase procedural efficiency in the second instance but will certainly reduce the procedural efficiency in the first instance.^{Thomas, "Some Thoughts after the Conference on the New Rules of Procedure of the Boards of Appeal", epi Information 2019, 11, 14.} For sure, the new RoPBoA will increase the workload of the parties and their representatives.^{https://www.juve-patent.com/news-and-stories/legal-commentary/epo-adopts-boards-of-appeal-revised-rules-of-procedure/.} In addition, authors have already questioned the compliance of the former RoPBoA with fundamental rights, e.g., the right to be heard, enshrined in the European Patent Convention (EPC).^{Wegner, Hess, "The right to be heard before the EPO Boards of Appeal - overruled by formal regulations?", epi Information 2014, 32.}

Unfortunately, initiating amendments of the Implementing Regulations to the EPC by the Institute of Professional Representatives (epi) is not explicitly foreseen in the EPC. Typically, the President of the EPO, who is also responsible for establishing the agenda of the Administrative Council meetings, initiates amendments to the Implementing Regulations. It is thus not surprising that such proposals primarily take into account wishes from the administration and seldom experience from daily practice of the applicants, patent owners, opponents and their respective representatives.

However, the rules of procedure of the Administrative Council allow for third parties like the epi to propose to the President topics to be set on the agenda of Administrative Council meetings.^{Art. 19 2.2, http://documents.epo.org/projects/babylon/eponet.nsf/0/053CF320F6312A95C12583C500467DCD/$File/Rules_of_Procedure_AC_EN.pdf.} This procedure could be used to allow for a decision of the Administrative Council^{Art. 33(1)(c) EPC.} on the proposed Rule 36 EPC to increase the procedural efficiency for the benefit of both the applicants and the EPO without compromising legitimate legal interests of third parties.

To motivate the proposal, the legal provisions leading to the increased administrative burden associated with filing divisional applications are discussed first.

According to Article 100 (c) EPC, an opposition may be filed on the ground that the subject-matter of the European patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application, beyond the content of the earlier application as filed.

Most professional representatives according to Art. 134 EPC will agree that the approach of the European Patent Office with respect to the allowability of amendments, in particular in view of Article 123(2) EPC, is strict. The German Federal Court of Justice has provided very good arguments why it does not follow the (sometimes too strict) jurisprudence of the Boards of Appeal in this respect.^{e.g., Federal Court of Justice, Decision of November 8, 2016 - X ZB 1/16 Ventileinrichtung, GRUR 2017, 54, Marginal No. 52-54; Judgment of February 11, 2014 - X ZR 107/12 - Kommunikationskanal, OJ EPO 2015 Special Edition 2, 119.}

Nevertheless, professional representatives will have to take into account the established case law when filing divisional applications. In most cases, this requires ensuring that the complete content disclosed in the description, claims and drawings of the earlier application is also disclosed in the divisional application.

It seems as if this requirement could be met by using filing by reference for the divisional application.^{Rule 40(2) EPC.} However, Rule 137(1) EPC does not allow for amending the (divisional) application before the European search report has been established.

Therefore, the divisional application will have to be filed with a set of claims differing from the original set of claims of the earlier application if the applicant wants different subject-matter to be searched for the divisional application.

A further possibility would be to file the divisional application by reference to the description and the drawings of the earlier application only and file the new set of claims separately. However, in this case the disclosure of the original set of claims of the earlier application, in particular explicitly expressed dependencies in the original set of claims, gets lost.

Hence, the diligent professional representative will refrain from filing by reference^{A method in any case rarely used; see Mulder, Visser, "Proposals for Streamlining the Filing Date Requirements of the European Patent Convention", IIC 2013, 220, 224.} and file the drawings of the earlier application, the description of the earlier application, a list of clauses corresponding to the original set of claims of the earlier application as additional description pages,^{see, e.g., European patent application 19 161 956.8, https://register.epo.org/application?documentId=E22SY19Z0057DSU&number=EP19161956&lng=en&npl=false.} a set of amended claims to be searched for the divisional application.

This "copy-process" can lead to unnecessary errors because a special (mathematical) character might not be available in a new program version or fonts for the-language, in which the application was originally filed, may not be available.^{Please note that the languages of publication for international applications also include Arabic, Chinese, Japanese, Korean and Russian (Rule 48.3(a) PCT). The professional representative may be responsible only for the European phase of an international application and may not dispose of an alphanumeric version of the international application in the language as filed.} Moreover, with the exception of the set of amended claims, the whole description, all drawings and the original set of claims of the earlier application have already been processed by the EPO and it has to be done a second time for the divisional application. In addition, the current version of the Guidelines prescribes that claim-like clauses in the description must be deleted prior to grant.^{https://www.epo.org/law-practice/legal-texts/html/guidelines/e/f_iv_4_4.htm.} Furthermore, during examination of the divisional application the Examining Division will have to check with respect to every amendment if the claimed subject-matter is disclosed both in the earlier application and in the filed divisional application.

Thus, the current procedure generates considerable administrative overhead which does not seem to serve any legitimate purpose and could be removed with the proposed Rule 36 EPC.

The proposed Rule 36(1) EPC prescribes that a divisional application is automatically filed by reference to the earlier application and that the reference is deemed to include a reference to potential claims and/or drawings of the earlier application.^{Including a provision for filing by reference in Rule 36 EPC has already been proposed by Mulder, Visser, "Proposals for Streamlining the Filing Date Requirements of the European Patent Convention", IIC 2013, 220, 224.} Thus, refiling of application documents is avoided and Examining Divisions, Opposition Divisions, Boards of Appeal will only have to check if the claimed subject-matter is disclosed in the earliest application.

The Enlarged Board of Appeal considered it "unsatisfactory that sequence of divisional applications each containing the same broad disclosures of the original patent application, by means of at least an unamended description, should be pending for up to twenty years".^{Enlarged Board of Appeal, G 1/05, Decision of June 28, 2007, Reasons 13.5.} Meanwhile, the filing of sequences of divisionals is discouraged by levying an additional fee for divisionals filed on divisionals.^{Rule 38(4) EPC, RFees Art. 2(1)1b).} In addition, there may be a legitimate interest for even allowing European patents with identical claims, for example, if two applicants originally filed one common application and later want to be able to prosecute the claimed subject-matter independently.

The requirement that the divisional application has to be filed directly with the EPO is maintained (cf. proposed Rule 36(2) EPC) and the translation requirements are adapted (cf. proposed Rule 36(3) EPC). The legal fiction of proposed Rule 36(4) EPC avoids refiling of other documents already in the file of the earlier application.

Proposed Rule 36(5) EPC is provided as lex specialis to Rule 137(1) EPC to allow for the search to be performed on the basis of a set of amended claims. It seems to be justified to restrict the possibility to file amended documents to the date of filing of the divisional application, because the applicant knows sufficiently in advance how long the earlier application will be pending: In case of a granted European patent, the applicant receives the communication according to Rule 71(3) EPC sufficiently before the publication of the grant in the European Patent Bulletin;^{Art. 97(3) EPC.} Should the application be refused, the applicant may still file the divisional application within the time limit for filing the appeal^{Enlarged Board of Appeal, Decision of September 27, 2010 - G 1/09, Headnote.} or a before final decision of the Board of Appeal.^{Enlarged Board of Appeal, Decision of September 27, 2010 - G 1/09, Reasons 4.2.2.}

Moreover, the last sentence of proposed Rule 36(5) EPC ensures that third parties are informed on the content of the set of claims to be searched.

As the applicant has no possibility to reduce the number of description pages anymore due to the obligatory filing by reference of the divisional application, the additional fee if the application comprises more than 35 pages^{RFees Art. 2 Nr. 1a.; Rule 38(2) EPC.} is abolished for the divisional application. This seems to be justified as the EPO benefits from the prescribed filing of the divisional application by reference, because the administrative burden for processing the divisional application documents is substantially reduced. In particular, the amendment ensures that the applicant already paid the respective additional fee for the earlier application where all the processing, type setting, etc. has been performed.

The proposed Rule 36 EPC could be applied to every pending application upon entry into force. Special transitional provisions seem not to be required.

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