G 1/05 and G 1/06 are decisions of the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) that were issued on 28 June 2007 and answer questions relating to divisional applications under the European Patent Convention (EPC). The two decisions were published in the Official Journal of the EPO in May 2008.

Background

Article 76(1), second sentence, EPC states that a divisional application

Questions

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 (considered under case number G 1/05): In case T 1409/05, Technical Board of Appeal 3.4.03 referred the following questions to the Enlarged Board of Appeal (considered under case number G 1/06):

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(1), second sentence, EPC had a double purpose: and that none of these purposes justified the invalidity of a divisional application on the grounds that it would, on filing, extend beyond the content of the earlier 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 (1) 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.

Suggestions to the legislator

The EBA also considered some additional issues of fairness to third parties in relation to divisional applications: