J 0007/21 - Co-applicants file divisional application

Key points

A divisional application was filed in 2019. One of the co-applicants of the divisional application, was not the same as indicated in the Register for the parent application. The parent application was withdrawn the day after the filing of the divisional application.

The decision is anonymised, and all parties are referred to as "N.N." which makes the decision difficult to follow.

The applicant argues that "N.N. was an applicant of the divisional application as N.N. had merged into N.N. as of 1 January 2018. Copies of the documents demonstrating the merger were submitted in the form of a confirmatory deed of merger dated 20 March 2018. It was requested that the application at issue be treated as a divisional application."

"The appellants provided a confirmatory deed of merger dated 28 March 2018 (D2), which states that N.N. [new applicant] is a public institution serving scientific, cultural and professional purposes created pursuant to Decree No. 2017-596, issued by the French Ministry of Education on 21 April 2017, by merging N.N. [old applicant] and N.N. [another French university ?]."

The Board: "In view of the above, it is therefore established that from 1 January 2018 N.N. became the universal successor in law of N.N.."
"The board comes to the [...] conclusion that Rule 22(3) EPC does not apply in the context of universal succession, "
"The board concludes that the notion of "transfer" in Rule 22 EPC should be interpreted as not covering universal successions, meaning that none of the requirements laid down in Rule 22 EPC for the registration of transfers is applicable. In the latter case, the effect of the change in ownership of the patent application is immediate and there is no need to postpone it to a later date on which the documents establishing that change have been provided to the EPO."
"In view of the above, the board considers that as of 1 January 2018 N.N. automatically became the universal successor and owner of the patents and patent applications owned by N.N., including the jointly owned European patent application No. [X] (the parent application), there being no need to request registration of the transfer, file documentary evidence and pay the fee. Therefore, the [divisional application], filed by the joint applicants N.N., on 17 September 2019 was filed by the same co-applicants as the parent application and meets the requirements of Article 36(1) EPC [sic]."
"the application at issue must be treated as a divisional application of the earlier European patent application [], which was still pending on the filing date."

As a comment, it is indeed established case law that acquiring the property of a European patent or patent application by way of universal succession, is not subject to the requirement of Rule 22 that a fee must be paid for registering a transfer and that a transfer is only effective vis-à-vis the EPO once the requirements for a valid request under Rule 22 EPC are fulfilled. As held in T 15/01, hn. II: " [Rule 22(3) EPC 2000] does not apply in the context of universal successions in law. The universal successor of a patent applicant or patentee automatically acquires party status in proceedings pending before the European Patent Office".
The Board states that: "The board comes to the same conclusion that Rule 22(3) EPC does not apply in the context of universal succession, but not for the same reasons as those submitted by the applicant.". I understand that the Board considers universal succession to be a species of the genus "transfer of assets" (contrary to an argument of the applicant), but not a species of the genus "transfer in the sense of Rule 22 EPC".
Rule 36(1) stipulates that "the applicant" may file a divisional application. The term applicant refers to the applicant of the (pending) parent application. Uncontested in the present decision is the rule that joint applicants can only file a divisional application acting jointly.
Interestingly, a divisional application is apparently not published as long as it is not dealt with as a divisional application.

EPO

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

Rent Agreement Format