Federal Patent court: Divisional application - pending

Deriving a divisional application from a parent application is a normal procedure in practice with patents.

Recently, the Federal Patent Court in Germany (Bundespatentgericht, BPatG) ruled on a divisional application, a divisional application to the parent application 10 2021 200 171.8, which was the subject of an appeal procedure that has since been withdrawn.

The facts

The patent applicant stated (in a written statement dated 22 August 2022) in due time and in writing that the application documents attached to the letter constituted a divisional application from the parent application subject to appeal.

However, the patent applicant declared this to the German Patent and Trade Mark Office (DPMA) - which, however, were not competent, as the appeal proceedings were pending before the Federal Patent Court (see the relevant case law of the Federal Court of Justice in BGH X ZB 9/18 - Abstandsberechnungsverfahren). The declaration of division arrived there one day later, on 23 August 2022.

Two days after the written declaration of the divisional application, the patent applicant withdrew the appeal concerning the parent application (receipt of the declaration of withdrawal on 25 August 2022). This ended the appeal proceedings.

Finally - about 7 months after the patent applicant's written statements - the DPMA opened a divisional file at the request of the Federal Patent Court concerning the divisional declaration of the applicant and, by letter of 16 March 2023, communicated the file number of the divisional application, together with a reference to fees not yet paid in full. The filing fee for the divisional application had been paid on 22 August 2022, but the fee for the request for examination had not.

The question was: Is the declaration of division effective?

Declaration of division valid upon receipt of divisional application - pending

The division declared by the applicant to the Federal Patent Court on 22 August 2022 under § 39 (1) German Patent Act was initially effective, as it was declared before the application proceedings concerning the parent application were finally disposed of. A declaration of division is already valid upon receipt of the divisional application, this was confirmed by the Federal Patent Court in the present case.

However, the declaration of division was still pending. This is because a divisional application can only become a fully effective application if the applicant pays the required fees within three months of receipt of the declaration of division (under § 39 (3) German Patent Act). In concrete terms, for this case, the patent applicant would thus have had to pay not only the filing fee but also the fee for the request for examination by 23 November 2022. The DPMA reminded the applicant of this in writing in October 2022.

Partial registration can be waived retroactively

But the fees were not paid in full. As a result, the divisional application is deemed not to have been filed (§ 39 (3) Patent Law). And as a result, the effects it initially had are also withdrawn with retroactive effect, so that the divisional application that came into existence also lapses retroactively (cf. Schulte, PatG, 11th ed., Sec. 39, marginal no. 37).

The Federal Patent Court therefore found that the applicant's divisional application of 22 August 2022, received by the Federal Patent Court on 23 August 2022, was deemed not to have been filed (BPatG decision of 13 July 2023, 9 W (pat) 19/22). The application fee already paid will be refunded.

Patent application, divisional application, parent application

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