Germany: Court decides on issues related to declaration of division during appeal

February 04 2019

According to Section 39 of the German Patent Act, the applicant may divide an application at any time by submitting a declaration of division. The text of the divisional application can be filed within three months of receipt of this declaration.

In a recent decision (19 W (pat) 33/17), the Federal Patent Court had to decide on two issues: (i) to which body the declaration of division has to be submitted during the appeal stage, and (ii) whether or not re-establishment of rights for submitting this declaration can be requested.

In this particular case, a patent application was rejected by the examining division of the German Patent and Trademark Office (GPTO), and the applicant filed an appeal with the Federal Patent Court. However, the appeal was dismissed. Within the time limit for filing an appeal on points of law with the Federal Court of Justice, the applicant submitted a declaration of division to the GPTO but not to the Federal Patent Court. Shortly after expiry of the time limit, the GPTO forwarded the declaration of division to the Federal Patent Court. As the applicant did not appeal the decision of the Federal Patent Court, the application was not pending anymore at the time when the GPTO forwarded the declaration of division to the Federal Patent Court.

Based on the following reasoning, the Federal Patent Court decided that no effective declaration of division had been submitted.

While an application is pending in the appeal stage, the declaration of division is to be submitted exclusively to the Federal Patent Court. This also applies if the Federal Patent Court has already issued its decision on the appeal. In this case, the Federal Patent Court remained the competent authority to decide on whether or not an effective declaration of division was submitted and, if effective, on patentability of the divisional application.

Furthermore, the Federal Patent Court decided that Section 39 of the German Patent Act does not contain – not even implicitly – a time limit, which is why no re-establishment of rights for submitting a declaration of division is possible. The approach taken by the Federal Patent Court is in line with the case law of the Boards of Appeal (e.g. J 10/12).

The Federal Patent Court considered both issues i.e. the correct addressee for the declaration of division during the appeal stage (in particular if the Federal Patent Court has already issued its decision on the appeal), and the re-establishment of rights for the declaration of division as legal matters of fundamental importance and therefore allowed an appeal to the Federal Court of Justice.