Declaration of division of the patent application - where to be filed?

With its recent ruling, the Federal Supreme Court reversed a contrary ruling of the BPatG on the declaration of division of a patent in an appeal instance. The focus was on the responsibility for receiving the declaration of division: was it to be filed at the patent court or at the DPMA?

The Federal Patent Court, in its 2018 judgment, held that the declaration of division of a patent was invalid and dismissed the application for restitutio in integrum as inadmissible (we reported: Patent application in appeal instance – declaration of division to DPMA or BPatG?). In essence, it was about the responsibility for receiving the declaration of division, because in the this case the patent office (DPMA) had received the declaration of division. Since, however, the application was still pending before the appeal court, the Patent Office therefore had no competence to receive a declaration of division, the BPatG ruled, since the declaration of division of the application under § 39 Patent Law had to be filed, according to case law, at the office where the application was pending at that time. The applicant appealed against this judgement of 2018 with a legal appeal before the BGH.

BGH reversed BPatG ruling

The BGH now reversed this judgment: Contrary to the opinion of the Patent Court, the applicant had declared the division of the application in good time, the Federal Court of Justice ruled. If the applicant declares the division of the application only after the patent court has rejected the appeal, the declaration must be made to the Patent Office, which also relinquishes responsibility for the substantive examination of the divisional application.

According to Sec. 39 (1), 1st sentence, Patent Law, the applicant may divide the patent application at any time, the BGH clarified. The only prerequisite for this is that the parent application still exists in law.

In the present case, the applicant lodged an appeal against the decision rejecting the application in due time and the division was therefore possible until the appeal instance was closed, irrespective of whether the appeal was admissible or well founded. The BGH ruled in its ruling that the applicant may also divide the application while a legal appeal against the rejection of his appeal is pending.

Responsibilities for the receipt of a declaration of division

Since the jurisdiction of the Patent Office (DPMA) or the Patent Court (BPatG) also played a relevant role in this case, the second part of the ruling of the BGH also clarified the jurisdiction to receive a declaration of division, especially in an appeal instance.

The BGH ruled:

“The division of the application shall be declared to the Patent Court, which shall also examine the divisional application as soon as the applicant has filed an appeal against the rejection of the application – and also, as here, of a parent application – and the appeal proceedings have become pending before the Patent Court.

However, if the applicant declares the division of the application only after the patent court has rejected the appeal, the declaration shall be made to the Patent Office, which shall also be responsible for the substantive examination of the divisional application”. (Quoted and translated from the leading decision of BGH)

The BGH stated that, in principle, the jurisdiction for the substantive examination and also the examination of the divisional application lies with the Patent Court if the division is declared after the proceedings concerning the applicant’s complaint have become pending before the Patent Court. The BPatG rightly took this into account in its judgment. Nor is the recent view of the Patent Court that the decision on a divisional application based on a division of the patent declared during the pendency of the proceedings on the applicant’s complaint should be referred back to the Patent Office.

If the division of the application is declared only after the proceedings on the applicant’s complaint have become pending before the patent court, the patent court must therefore in principle decide not only on the application for grant of a patent for the parent application but also on the further application for grant of a patent based on the same invention, the Federal Supreme Court clarified.

Patent Court does not have jurisdiction if the complaint has already been dismissed

However, a different assessment of receipt and examination competence would be necessary if the division of the patent application is declared only after the patent court has already dismissed the appeal. For then the proceedings before the Federal Supreme Court (BGH) are pending as a court of appeal – or can still be pending there. This was the case in this dispute because the time limit for the appeal had not yet expired. Unlike the Patent Court, the Federal Supreme Court is only called upon to review the appeal decision in law (§ 101.2 German Patent Law). In the event of a division during the appeal proceedings, the divisional application could therefore neither be examined by the Federal Supreme Court, which did not grant a patent, nor by the patent court, at which the proceedings were no longer pending, the Federal Supreme Court ruled. The responsibility for examining the divisional application therefore reverts to the Patent Office DPMA.

The BGH therefore set aside the judgment of the BPatG (19 W(pat) 33/17) with its judgment X ZB 9/18 – “Abstandsberechnungsverfahren” and referred the case back to the DPMA.