J 7/21: A systematic assessment on the requirement of identity of applicants for divisional applications by the EPO’s Legal Board of Appeal

In an appeal decision against the Receiving Section’s decision holding that an EP application was not to be treated as a divisional application, where the joint applicants were not identical to those of the parent EP application, the Board of Appeal confirmed that Rule 22(3) EPC is not applicable in case of universal succession.

Background

On the basis of an EP application filed by five joint applicants, a divisional application was filed in the name of four of the same five applicants (applicants 1, 3, 4 and 5) and a newly named applicant 2. A day after the divisional application was filed, the parent application was actively withdrawn. Due to the discrepancy in identity of applicant 2, the Receiving Section considered that the requirements of Rule 36(1) EPC were not met, and so decided that the application was not to be treated as a divisional application. Although the applicants filed proof by means of documents of merger showing that the original applicant 2 had merged into the newly named applicant before the filing date of the divisional application, the Receiving Section maintained that a divisional application could only be filed by the registered applicants of the parent application. Since the withdrawal of the parent application had already become effective, a transfer of rights of applicants of the parent application could no longer be registered. This decision of the Receiving Section was appealed by the applicants.

Reasons

In the reasons for the decision, the Board of Appeal acknowledged that the evidence on file showed that the newly named applicant is the universal successor of applicant 2. Regarding universal succession, they confirmed three prior Technical Board of Appeal decisions which held that universal succession is not a transfer of rights, such that universal succession can be considered as an exception to Rule 22(3) EPC (see T 15/01, T 6/05 and T 2357/12).

For a systematic assessment on the requirement of identity of applicants for divisional applications, the Board of Appeal established the meaning of “transfer” in the context of Rule 22 EPC as follows (point 4.4 of the reasons):

“Under Article 71 [EPC] a patent application is an object whose property can be transferred, or over which rights can be constituted and transferred. … Therefore, the transfer of a European patent application has the effect of making a patent application the property of another person.

The only provision relating to the conditions under which the transfer of a patent application may take place is Article 72 EPC, which states that “[a]n assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract”. Although Article 72 EPC governs formal requirements, the only reference made in the EPC to the transfer of a patent application is in the form of an assignment contract.” … Moreover, Rule 143(1)(w) EPC states that the European Patent Register must contain entries concerning the rights and transfer of such rights relating to an application or a European patent where the Implementing Regulations provide that they are to be recorded. Hence, it can be inferred from that provision that not all kind of transfers of rights need to be registered, but only those explicitly mentioned in the Implementing Regulations. In so far as Rules 22 to 24 EPC provide that transfers, licences and other rights in a patent application must be registered, the provisions of Rule 143(1) EPC can only be understood if the term “transfer” in Rule 22 EPC does not include all means of acquiring ownership of a patent application.”

An interpretation of Rule 22 EPC in view of its purpose, led the Board of Appeal to reach the same conclusion. In point 4.5 of the reasons, the Board held that:

“The intention of Rule 22 EPC is to ensure the informational role of the European Patent Register and to avoid any ambiguity as to who owns a patent application during proceedings before the EPO. … [These requirements] are justified when transferring a patent application by assignment, since only a specifically designated right is transferred to a third party and the former patent proprietor, i.e. the assignor, continues to exist. There are therefore two legal entities that still exist, and it is important to be able to determine, by consulting the Register, the extent of the rights whose ownership has been transferred and the identity of the owner.

However, in the case of universal succession, the entirety of the assets are transferred automatically as a result of the disappearance of the legal personality of the patent application’s owner. Consequently, there is no risk of confusion between two legal entities that could be considered owners of the patent application, nor regarding the extent of the rights transferred, since all assets remain united.”

The Board of Appeal concluded by stating explicitly that the notion of “transfer” in Rule 22 EPC should be interpreted as not covering universal succession, such that none of the requirements laid down in Rule 22 EPC is applicable to such cases. The Board thus set aside the decision of the Receiving Section to refuse to consider the application in suit as being a divisional application.

Comments and takeaways

Decision J 7/21 provides a welcome confirmation from a legal Board of Appeal that universal succession is considered an exception to the requirements under Rule 22(3) EPC. However, Rule 22(3) EPC is to be applied in cases of a transfer of rights where the former owner continues to exist.

Thus, where rights have passed by universal succession, recording a change in ownership of the parent application prior to filing of the divisional application is recommendable in case there is any question about the effectiveness of the change. In case of a transfer of rights by contract, e.g. by assignment, it seems to remain the case that the divisional application should be filed in the same name which is recorded against the parent application.

It should also be kept in mind in this context that transfers can only be registered for pending applications, i.e., where the withdrawal of an application is final, it can no longer be transferred (see, e.g. J 10/93). Particular care should therefore be taken when filing divisional applications where the parent application is intended to be withdrawn.