Netherlands Pays Bas Niederlande. Report Q193. in the name of the Dutch Group by Lars DE HAAS, Addick LAND, Hans PRINS and Marc VAN WIJNGAARDEN

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1 Netherlands Pays Bas Niederlande Report Q193 in the name of the Dutch Group by Lars DE HAAS, Addick LAND, Hans PRINS and Marc VAN WIJNGAARDEN Divisional, Continuation and Continuation in Part Patent Applications Introduction: 1) In The Netherlands, there is a national patent system, which is regulated by the Dutch Patent Act 1995 (Rijksoctrooiwet 1995, DPA ), and a regional system, i.e. European, which is governed by the European Patent Convention ( EPC ). 2) Unlike the EPC, the DPA does not provide for a substantive examination of Dutch patent applications. Material examination of patents granted under the DPA shall take place retro actively by Dutch civil court 1. 3) Dutch court does not examine (divisional) applications. Further, the DPA does not provide specific rules for valuation of divisional patents 2 during litigation. Amongst others, it is pointed out in this respect that after grant, only the traditional grounds for revocation apply, as set out exhaustively in Article 75 DPA and Article 138 EPC respectively, i.e.: the subject matter of the European patent is not patentable (not susceptible of industrial application, not novel, lack of inventive step, etcetera.); insufficient disclosure; added matter; extension of the scope of protection; proprietor not entitled to the patent. As a consequence, the matters at hand are predominantly dealt with in case law by the EPO Boards of Appeal. Questions I) Analysis of the current law 1) Are divisional, continuation or continuation in part applications, respectively, available under your national or regional law? 4) Divisional applications are available, both under national law and regional law. Of particular relevance are Article 28 DPA and Article 76 EPC, the latter in conjunction with Rule 25 of the Implementing Regulation to the Convention on the grant of European Patents ( Implementing Regulations ). 1 In the first instance the specialized district court at The Hague, which has exclusive jurisdiction in such matters. 2 For continuation and continuation-in-part applications: see the answer to Question 1. 1

2 (National law) Article 28 DPA: 1) The applicant can divide his earlier application by filing a separate application for a part of the contents thereof. This application will be regarded [..] as filed at the same day of the earlier application. [..] 3) The subject matter of the divisional [..] application must be covered by the content of the earlier application. 4) Dividing [..] is possible until the moment that the patent application must be registered pursuant to Article 31, subsection 1 or 2, save that for an applicant that has requested a prior art search as meant in Article 32, there is a term of at least 2 months from the date of dispatch of the communication ex Article 34, subsection 4. At the request of the applicant, the patent office can extend the term to a maximum of 4 months from the date of dispatch of the communication ex Article 34, subsection 4. (Regional law) Article 76 EPC: 1) A European divisional application must be filed directly with the European Patent Office at Munich or its branch at The Hague. It may be filed only in respect of subject matter which does not extend beyond the content of the earlier application as filed; in so far as this provision is complied with, the divisional application shall be deemed to have been filed on the date of filing of the earlier application and shall have the benefit of any right to priority. 2) The European divisional application shall not designate Contracting States, which were not designated in the earlier application. 3) The procedure to be followed in carrying out the provisions of paragraph 1, the special conditions to be complied with by a divisional application and the time limit for paying the filing, search and designation fees are laid down in the Implementing Regulations. (Regional law) Rule 25 of the Implementing Regulation: 1) The applicant may file a divisional application relating to any pending earlier European patent application. [..] 5) A divisional application is accorded the same filing date as the parent application, and it can rely on any right of priority of the parent application in respect of subject matter contained in the parent application. 6) Neither under national law, nor under regional law, there is a provision available for a continuation in part application. Adding subject matter to a divisional application, which subject matter is not disclosed in the earlier application is not allowed and forms a ground for rejection or revocation. Subject matter of the claims must be directly and unambiguously disclosed in the parent application (decision T 514/88 of the EPO Boards of Appeal). 7) As far as it concerns continuation applications, as defined in the Working Guidelines, sub 1, the term neither exists under the DPA, nor under the EPC. However, EPO practice shows that divisional applications are also filed and granted for the same invention as claimed in the parent application. Hence, in practice continuation applications appear to exist, be it in the form of a divisional application. 2

3 2) What is the justification behind allowing the filing of divisional, continuation and continuation in part applications in your law? 8) Pursuant to Article 27 DPA and Article 82 EPC a patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept. In accordance with Article 4 G, subsection 1, of the Paris Convention, justification for the filing of divisional applications is found in resolving conflict with these provisions. If in a patent application there are multiple inventions, which are not related to a single general inventive concept, then one or more divisional applications may be filed to divide out other inventions, and restore unity. 9) Pursuant to Article 4 G, subsection 2, of the Paris Convention, the applicant may also choose to voluntarily divide his application for other reasons. Such other reasons are not expressly mentioned, let alone defined in the DPA or the EPC. However, it is clear that such reasons do not include a unity of invention problem: it (also) concerns divisional applications for (parts of the) the very same invention as the parent application. 10) Multiple divisional applications can be filed based on a single parent application. At their turn, those divisional applications may become parent applications for subsequent divisional applications. This could result in cascades of divisional applications within the same patent family. The filing of divisional applications can theoretically continue over the full term of 20 years from the first parent application. 11) Neither the EPC, nor the DPA provide justification for the filing of divisional applications, in as far as such filing is not aimed at overcoming a unity of invention problem. Although the EPC and DPA do not expressly rule out such continuation style divisional applications, they may often come in conflict with important principles like avoiding double patenting and legal certainty for third parties. 3) Under what circumstances and conditions may divisional, continuation and continuation in part applications (or combinations thereof) be filed in your national or regional patent system? 12) Under the DPA and the EPC, at this moment the following conditions can be identified: a) At the time of filing of the divisional, the parent application out of which the divisional application is divided, must be pending. As stated above, the parent application may be the first application, but can in principle also be an earlier divisional. The condition that the parent application is pending means that the applicant must file before the parent application is granted, refused, withdrawn, or deemed to have been withdrawn (Article 28, subsection 4 DPA; Rule 25 of the Implementing Regulations). Filing at a later stage is not possible. One differentiation should be made here: if the grant of a European parent is refused, and the applicant files a notice of appeal, the decision to refuse cannot take effect until the appeal is over. As a consequence, a divisional application may be filed while such appeal proceedings are pending. b) Only the applicant on record may file a divisional application. c) Divisional applications may only be filed in respect of subject matter which does not extend beyond the content of the parent application (Article 76, subsection 1 EPC; Article 28, subsection 3 DPA), irrespective whether the subject matter is claimed or not in the parent application. All essential features claimed in the divisional application must have been disclosed in the description, claims and/or drawings of the parent application as filed. In decisions T 527/88 and T 514/88 of 10 October 1989 and 11 December 1990 respectively, the EPO Boards of Appeal extended the 3 As there is no material pre-grant assessment of Dutch patents, and instead a system whereby patent applications are registered within a given term from the date of filing, the word grant may not be appropriate for Dutch patents. This also explains the specific formulation of Article 28, subsection 4 DPA. 3

4 principles set out in rulings on Article 123(2) EPC to the relationship between divisional and parent applications. The subject matter of the amended divisional application or patent had to be directly and unambiguously derivable from, and consistent with, the original disclosure of the parent application. In decision T 276/97 of 26 February 1999, the EPO Board of Appeal decided that the purpose of Art. 76, subsection 1 EPC, second sentence, was the same as the purpose of Art. 123, subsection 2 EPC: to guarantee the legal certainty of third parties taking the content of the parent application as their basis and to create a fair balance between the interests of applicants and other parties. It is noted that, in decision T39/03 of 26 August 2005, the EPO Board of Appeal has ruled that a divisional application that contains added subject matter in view of the parent application is an invalid application, and this cannot be remedied by subsequent removal of the added subject matter. This matter was considered so important by the EPO, that it has been referred to the Enlarged Board of Appeal of the EPO under reference G1/05 for a final decision. The Enlarged Board has not rendered a decision yet. d) With restraint, reference is also made to the Guidelines for Examination in the EPO ( Guidelines ). Restraint is observed, because the Board of Appeals is not obliged to apply the rules of the Guidelines. The Board only applies the EPC. The Examiner, however, is obliged, but his assessment of divisional applications is in practise not such, that it can be said that he (consistently) observes these Guidelines. Particularly, it concerns the Guidelines set out hereunder: C IV, 6.4: The EPC does not deal explicitly with the case of co pending European applications of the same effective date. However, it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention. It is permissible to allow an applicant to proceed with two applications having the same description where the claims are quite distinct in scope and directed to different inventions. However, in the rare case in which there are two or more European applications from the same applicant definitively designating the same State or States (by confirming the designation through payment of the relevant designation fees) and the claims of those applications have the same filing or priority date and relate to the same invention (the claims conflicting in the manner explained in VI, 9.1.6), the applicant should be told that he must either amend one or more of the applications in such a manner that they no longer claim the same invention, or choose which one of those applications he wishes to proceed to grant. Should two applications of the same effective date be received from two different applicants, each must be allowed to proceed as though the other did not exist. C VI, 9.1.6: The parent and divisional applications may not claim the same subject matter (see IV, 6.4). This means not only that they must not contain claims of substantially identical scope, but also that one application must not claim the subject matter claimed in the other, even in different words. The difference between the claimed subject matter of the two applications must be clearly distinguishable. As a general rule, however, one application may claim its own subject matter in combination with that of the other application. In other words, if the parent and divisional applications claim separate and distinct elements A and B respectively which function in combination, one of the two applications may also include a claim for A plus B. 4

5 Although the Examiner does not seem to (consistently) apply these Guidelines, and although the Board of Appeals is not obliged to apply, further support for the position formulated in the Guidelines is also found in the Münchener Gemeinschafts kommentar 4, paragraph 137: Besteht zwischen europäische Teilanmeldung (eta) und europäische Stamm anmeldung (esta) Vollidentität, braucht man das Doppelschutzverbot nicht ins Feld zu führen: Die angebliche eta ist dann keine Teilanmeldung. Translation When the European divisional application and the parent application are completely identical, one does not have to present the double patenting prohibition: the presumed European divisional application is in that case not a divisional application. And paragraph 131 for the content of the divisional applications: Als Grundsatz kann folgendes gelten 118 : Für die sich aus der Teilung ergebenden Teilanmeldungen (also esta und eta) muss (aus dem Offen barungsgehalt) je wenigstens eine Erfindung übrig bleiben, die von der anderen abgrenzbar ist. Translation As basic rule the following may apply 118 : In the, from the dividing process resulting divisional applications (both parent and divisional application) should (from the disclosure) remain at least one invention, which can be delimited from the others. e) Contrary to the EPC, the DPA allows according to Article 28, subsection 1, that the applicant can file a divisional application for a part of the contents of the earlier application. This condition seems to indicate that in as far as it concerns Dutch patents, the DPA does not allow the filing of divisional applications wherein the same subject matter is claimed as in the parent application. 13) There are also specific criteria for cascades of divisional applications, which will be discussed hereunder. 4) Are cascades of divisional, continuation and continuation in part applications allowed, i.e. is it possible to file a divisional, continuation or continuation in part application on the basis of another divisional, continuation or continuation in part application? 14) Under the DPA and the EPC, it is possible to file a divisional application on the basis of an earlier divisional application. In as far as it concerns the EPC, this particularly follows from Rule 25, subsection 1 of the Implementing Regulation. This rule was amended in January In the EPO Notice explaining the amendment (OJ EPO 2/2002, 112), the following is stated: The word any has been introduced in order to clarify that it is irrelevant what kind of application the parent application is. The parent could thus also be an earlier Divisional application. 4 Europäisches Patentübereinkommen, Münchener Gemeinschaftskommentar, 8. Lieferung, Januar 1986, Carl Heymanns Verlag KG. 5

6 5) At what time during the prosecution of the parent application may divisional, continuation or continuation in part applications be filed? 15) At the time of filing of the divisional, the parent application out of which the divisional application is divided, must be pending. As stated above, the parent application may be the first application, but can in principle also be an earlier divisional application. The condition that the parent application is pending means that the applicant must file before the parent application is granted, refused, withdrawn, or deemed to have been withdrawn 5 (Article 28, subsection 4 DPA; Rule 25 of the Implementing Regulations). Filing at a later stage is not possible. 6) Is it a requirement for filing an application that is a divisional, continuation or continuation in part of an original application (or of another divisional, continuation or continuation in part thereof) that the original application (or the direct parent application, or both) is still pending at the time of filing of the divisional, continuation or continuation in part application? 16) It is only required that at the time of filing of the divisional application, the direct parent application is pending. 7) Is it a requirement that the original application (or the direct parent application, or both) is still pending throughout the prosecution of a divisional, continuation or continuation in part application derived therefrom? 17) No, there is no such requirement. As stated in paragraph 16, it is only required that at the time of filing of the divisional application, the direct parent application is pending. It is not required that this direct parent application remains pending during the prosecution of the divisional application. 18) It is added hereto, however, that in the still pending case G1/05, the EPO Enlarged Board of Appeal has been requested to answer the following questions: 1) Can a divisional application which does not meet the requirements of Article 76(1) EPC because, at its actual filing date, it extends beyond the content of the earlier application, be amended later in order to make it a valid divisional application? 2) If the answer to question 1) is yes, is this still possible when the earlier application is no longer pending? 8) Are there any restrictions as to what may be included in a divisional, continuation or continuation in part application? 19) Yes, there are such restrictions. 20) As explained in paragraph 12, under c, under the EPC and the DPA divisional applications may only be filed in respect of subject matter which does not extend beyond the content of the parent application. Further, contrary to the EPC, the DPA (Article 28, subsection 1) allows, that the applicant can file a divisional application for a part of the contents of the earlier application. This condition seems to indicate that in as far as it concerns Dutch patents, the DPA does not allow the filing of divisional applications wherein the same subject matter is claimed as in the parent application. 5 As there is no material pre-grant assessment of Dutch patents, and instead a system whereby patent applications are registered within a given term from the date of filing, the word grant may not be appropriate for Dutch patents. This also explains the specific formulation of Article 28, subsection 4 DPA. 6

7 9) In particular, may the description and/or claims contain or claim matter that was not contained or claimed in the original application, or other application from which the divisional, continuation or continuation in part application derives? 21) As explained in paragraph 12, under c, divisional applications may only be filed in respect of subject matter which does not extend beyond the content of the parent application, irrespective whether or not the subject matter is actually claimed in the parent application. 22) For the sake of clarity, it is added hereto, that the applicant of a second or further generation divisional application cannot reach back over the immediate parent application (earlier generation divisional) to claim subject matter not encompassed in that immediate parent, but encompassed in a parent application predating the immediate parent. This follows from case law of the Boards of Appeal of the EPO (such as T T797/02, T720/02 and T1409/05). At this point in time, there is, however, uncertainty as to the question what subject matter is to be considered encompassed in the immediate parent. 23) T797/02 and T720/02 required that the claims of a divisional application are en compassed within the claims of the immediate parent, the so called nested claims approach. In these decisions, the Boards of Appeal considered that if it were possible to add subject matter to the claim of a divisional application, which originates from the description of that application, and which had not previously been claimed, then the public would be completely uncertain during the life of a patent as to how much of the subject matter of the original application might still be claimed. This strict approach was not shared by the Board in T1409/05. In that decision, the Board decided that compliance with Article 76(1) EPC only required that the subject matter of a divisional be directly, unambiguously and separably derivable from each of the preceding applications as filed. 24) Considering that conflict, the case has been referred to the Enlarged Board of Appeal. In that (still pending) case G01/06, the following questions have been submitted: 1) In the case of a sequence of applications consisting of a root (originating) application followed by divisional applications, each divided from its predecessor, is it a necessary and sufficient condition for a divisional application of that sequence to comply with Article 76(1) EPC, second sentence, that anything disclosed in that divisional application be directly, unambiguously and separately derivable from what is disclosed in each of the preceding applications as filed? 2) If the above condition is not sufficient, does said sentence impose the additional requirement i) that the subject matter of the claims of said divisional be nested within the subject matter of the claims of its divisional prede cessors? ii) Or that all the divisional predecessors of said divisional comply with Article 76(1) EPC? 10) Is it possible to extend the patent term in respect of matter contained in the original application by filing divisional, continuation or continuation in part applications, including divisional, continuation or continuation in part applications containing added matter, to the extent the addition of new matter is allowed? 25) No, that is not possible. 26) First of all, it is reiterated that it is not allowed to add matter in a divisional application, which is not clearly and unambiguously derivable from the parent application. 7

8 27) Secondly, it is pointed out that the patent term is fixed at 20 years from the filing date of the original (i.e. first) application. Pursuant to Article 76, subsection 1 EPC and Article 28, subsection 1 DPA, the divisional shall be deemed to have been filed on the date of filing of the original application. 11) Is double patenting permitted or must the matter claimed in divisional, continuation or continuation in part applications be deleted from the claims of the original application, or other application from which the divisional, continuation or continuation in part application derives? 28) Neither in the DPA, nor in the EPC, there is a provision expressly directed against double patenting. 29) However, there are grounds to conclude that double patenting is not permitted under the EPC and the DPA, in any case in as far as considered by Dutch court. 30) Reference is made to the Guidelines and to the Münchner Gemeinschaftskommentar, cited above. Reference is further made to paragraph 139 of that Kommentar: Geht es aber darum, einen zeitrang gleichen Gegenstand in seine Varianten und Elemente aufzulösen, die einen einzigen, in der Stammanmeldung beanspruchbaren Schutzgegenstand i.s.v. Art. 69 (1) darstellen und in einem Hauptanspruch nebst abhängigen Ansprüchen i.s.v. R.29 (4) schutzfähig wären, so dürfte ein Verstoss gegen das Doppelschutzverbot vorliegen. Die Auffassung, dass (in Analogie zum Zusatzpatent) alles teilbar wäre, auf das ein Unteranspruch gerichtet werden könnte134, dürfte daher nicht richtig sein. Translation However, if it relates to a splitting up of subject matter having the same date, into variants and elements, which form subject matter that could have been claimed in the first application in view of Article 69(1) and in an independent claim next to dependent claims according to rule 29 (4), then a violation of the double protection prohibition is present. The view, that (analogous to patents of addition) everything is dividable, on which a dependent claim can be directed, should therefore not be correct. Furthermore, it is noted that in the Minutes of the Munich Diplomatic Conference for the Setting up of a European System for the Grant of Patents, on Article 125 Reference to general principles it is stated that there was a majority agreement in the Main Committee on the generally recognized principle of procedural law in the Contracting States that a person can be granted only one European patent for the same invention in respect of which there are several applications with the same date of filing. 31) Also, reference is made to the judgment of the District court of The Hague in the case Medinol vs. Cordis 6 : The Court agrees with Cordis that the phenomenon of double patenting of the same invention should be avoided as being contrary to a fundamental principle of patent law. In this respect the legal certainty of third parties who will at the patent owner s discretion and/or repeatedly be confronted with various patents for the same invention, should be regarded. In any case the effects of the patents which were granted in spite of this should be restricted as much as possible. 6 District Court of The Hague 31 March 2004, BIE 2005, 59, par

9 Although double patenting is not explicitly mentioned as a ground for invalidity in the EPC and DPA, it is still completely contrary to the rationale thereof to assign legal consequences to divisionals that turn into double patents. In the case Medinol vs. Cordis, the District court therefore formally declared that the invoked European divisional patent lacks legal consequences. 12) Does it matter in this respect whether the divisional, continuation or continuation in part application was filed in response to a restriction requirement issued by the patent granting authority? 32) No. That does not matter. II) Proposals for adoption of uniform rules 1) In the opinion of your National or Regional Group, what are the advantages, for applicants and third parties, of allowing the filing of divisional, continuation or continuation in part patent applications? 33) The advantages are solely, or at least predominantly for the applicant only. It concerns advantages such as: 1) Restoring unity of invention. 2) Obtaining protection with claims that are excluded in the parent due to restrictions on the number of independent claims (such as under Rule 29(2) old EPC). 3) Saving costs in the case of a plurality of inventions, for example when the commercial relevance of different inventions can not yet be overseen at the time of filing of the parent, or insufficient funding is available at that time for a plurality of applications. 4) Delaying decisions about the scope of the application with the aim of for instance designing the final claims to (future) infringements. 5) Delaying decisions about the scope or formulation of the application in anticipation of new case law regarding patentability. In T356/93 (Plant Genetic Systems) the EPO Board of Appeal refused patent claims directed to genetically modified plants in view of Article 53(b) EPC. Subsequently, the legal framework changed. From the draft EC Biotechnology Directive it could be understood that, in cases relating to an genetic engineering invention applicable to more than one variety, the plants obtained are patentable even if these plants comprise or are plant varieties. The same Board referred T1054/96 (Transgenic Plant) to the Enlarged Board of Appeals which referral resulting in G1/98 allowing claims directed to genetically engineered plants comprising plant varieties. If Plant Genetic Systems would have had a divisional application pending at that time, a patent could have been granted for the same invention originally refused. 6) Maintaining a threat: even if the parent application will be refused, or revoked in for instance a national revocation action, then the applicant will still have one or more divisionals, which in time may be invoked against the infringer. 7) Enabling the applicant to have another try in examination before the EPO, i.e. to learn from the examination of the parent patent or from court proceedings, and to use those lessons in a subsequent effort to formulate claims in order to obtain patent protection for the same invention (repairing tool; back up divisional). 9

10 2) In the opinion of your National or Regional Group, what are the disadvantages, for applicants and third parties, of allowing the filing of divisional, continuation or continuation in part patent applications? 34) Disadvantages are for both third parties and for the applicant. It concerns disadvantages such as: uncertainty for third parties over the life time of 20 years from the first date of filing, which mirrors the advantages 4 7stated under Q1. As an example: recently, the TBA revoked a European patent because the granted claims comprised added subject matter that could not be removed in view of Art 123(3) EPC (extension of patent rights). Before grant of this European patent the patentee had filed a divisional application. A divisional patent was granted on claims that did not comprise the added subject matter and covered the same invention. Apparently, the system of divisional applications was used to repair improper claiming. potentially high costs for the applicant in the prosecution phase (due to the unity requirement), in terms of fees and additional prosecution costs; potentially high opposition and litigation costs, for all involved parties, particularly in case of cascades. 3) In the opinion of your National or Regional Group, should the filing of divisional, continuation or continuation in part patent applications, respectively, be permissible? 35) It should be permissible to file a divisional application for a distinct or independent invention disclosed in an earlier or parent application. However, there should be a clear ultimate final time limit during the examination stage of this earlier or parent application up to which divisional applications may be filed. Such time limit could be the date of grant or the date of refusal, withdrawal or abandonment of the earlier or parent application. This implies that after expiration of this time limit a divisional application may not relate to a distinct or independent invention anymore. Accordingly, subsequent divisional applications may only be filed for nested or sub inventions that are subject of a direct earlier divisional application. Such subsequent divisional applications may again be filed up to the expiration of the same time limit but now in relation to the divisional application. It is noted that after filing of a divisional application the same rules in relation to in particular added matter, novelty, inventive step and sufficiency of disclosure/support apply. This means that the applicant having been confronted with formal or substantive objections should have the possibility to overcome those objections by filing amendments. A strictly formal approach resulting in the refusal of a divisional application or a revocation of a granted divisional patent just for incompliance with formal requirements is to be avoided. 36) According to the definition given in the Working Guidelines for Question 193, a continuation application is a second application for the same invention claimed in a prior application. Such continuation application should not be permissible for reasons, that within an examination procedure for a distinct or independent invention or group of inventions, it should be possible to arrive at a justified decision in relation to patentability. Allowing examination of the same invention in a second application would increase the workload at a patent office and prolong the time period within which third parties remain uncertain about the eventual outcome of such second examination proceedings. For the sake of clarity, this opinion thus also extends to such continuation applications that in EPO practise come in the form of a divisional application. 10

11 37) A continuation in part patent application which is filed during the lifetime of an earlier application and comprising added material not disclosed in the earlier application should not be permissible. Basically, for reasons that if this added subject matter is of substance in relation to patentability of an invention further defined by the added matter, a genuine patent application is to be filed. Otherwise, in particular third party rights are frustrated. 4) If international harmonisation were to be achieved in respect of the rules governing divisional or continuation patent applications, what should be the common rules in respect of the circumstances and conditions in which divisional, continuation or continuation in part applications may be filed? 38) The Dutch Group is of the opinion that common harmonized rules should provide for a time limit after which no voluntary divisional applications could be filed. Before expiry of such a time limit, applicants should have freedom to choose the subject matter of divisional applications without other limitations than those that apply to amendments in non divisional applications. However, such voluntary divisional applications should not claim to the same subject as an earlier application and effectively be a continuation application (see also paragraph 36) 39) The harmonized rules should strike a balance between legal certainty for third parties and fairness to applicants. Reasonable certainty implies that third parties have a right to know, within a reasonable time and with reasonable certainty, whether unclaimed subject matter in a patent application will be free for use. Fairness to applicants requires that applicants should have all reasonable opportunity to obtain protection for all inventions disclosed in a patent application, at least as far as there is no need to limit these opportunities for the sake of reasonable legal certainty. Considerations of double patenting and procedural economy should play a role in harmonization only to the extent that they comport with legal certainty and fairness. 40) These objectives may be realized by imposing limitations on subject matter that can be claimed in divisional applications as well as by imposing time limits on filing of divisional applications. Existing case law has attempted to realize these objectives only by imposing limitations of subject matter, probably because the legal framework does not allow for time limits. 41) The Dutch Group is of the opinion that this subject matter only approach has undesirable side effects. Applicants may easily find that consequences in terms of rights to claim subject matter in divisional applications are attached to acts of theirs that did not intend such consequences. Thus, the subject matter only approach can become a trap for the unwary, whereas it may be ineffective to improve legal certainty in the case of successfully cautious applicants. Moreover, the effect of the subject matter only approach depends strongly on the strictness of the standards for added subject matter in claims, which differs between different countries. 42) In the proposal of the Dutch Group, involuntary divisional applications allowed after the time limit should be limited to divisional applications made necessary by objections by the patent office, including objections based on non unity, restrictions on the number of independent claims and novelty and inventive step of genus claims that encompass a plurality of disclosed (but not necessarily previously claimed) species. Preferably, in the latter case (divisional applications directed at different species of an invalid genus claim) an additional time limit should be imposed for filing divisional applications after receiving the objection. 11

12 43) Before expiry of the time limit for voluntary divisional applications no subject matter limitations should be imposed on claims of divisional applications other than limitations that apply to amendments in non divisional applications. This serves the purpose of fairness to applicants who belatedly realize the importance of their inventions, without unduly harming legal certainty, because third parties know what freedom they can rely on after the time limit. 44) It should be impossible to manipulate the time limit for voluntary divisional applications by procedural tactics. The best way to ensure this would seem to be to couple this time limit to an event in the prosecution of the original parent application. Various time limits may be considered: The close of prosecution of the parent. This does not detract from legal certainty because third parties obtain certainty for the parent only at this time in any case. A disadvantage is that this time limit varies from application to application and is susceptible to procedural tactics. The publication date. This completely eliminates uncertainty of third parties, other than the inherent uncertainty of delayed publication. A disadvantage is that applicants may have too little time to appreciate the importance of their inventions. A time limit between these time limits, for example a time limit calculated from the date of filing (such as four years), or triggered by the notification of the search report or first substantial office action, or by the time limit similar to that for entry into the PCT national /regional phase. The Dutch Group prefers a first time limit linked to close of prosecution of the parent application, because this would introduce a minimum of change to existing practice. In addition, it could be worth considering that a divisional patent application should be given a date of filing as soon as the content of the divisional fulfils the requirements from the European Patent Convention and the non unity objection from the Examiner. 5) In particular, should a harmonised system permit the addition in a divisional, continuation or continuation in part application of matter that was not contained in the original application as filed? 45) No. This would contravene with the applicable rules regarding added matter, and the legal certainty for third parties. 46) The addition of subject matter is typically a feature of the US patent system, where the first to invent system prevails over the first to file system. In a first to file system, as in Europe and The Netherlands, where the application is published after 18 months, adding subject matter would bring legal uncertainty for third parties, which is undesirable. 6) Should it be permitted to use a divisional, continuation or continuation in part patent application to obtain new examination and decision of an application that contains claims that are identical or essentially identical with claims finally rejected in the course of the prosecution of the parent application? Should there be an exception where case law on the substantive conditions for patent grant of the patent granting authority has changed since the parent application was rejected? Would this possibility adequately take into account the interests of third parties in legal certainty? 47) The Dutch Group is of the opinion that a divisional application should not be used to obtain a new examination and a new decision of an application that contains claims which are identical or essentially identical, and which were already rejected in the prosecution of the parent application. In view of the legal certainty for third parties, the Dutch Group is of the opinion that there should not be an exception where case law or the substantive conditions for patent grant has changed since the parent application was rejected. 12

13 7) Should it be possible to extend the patent term in respect of matter contained in the original application by filing divisional, continuation or continuation in part applications, including divisional, continuation or continuation in part applications containing added matter? 48) The answer to this question should be negative, in the opinion of the Dutch National Group. Importantly, this may seriously harm the legal certainty of third parties. However, if the matter to be added to the earlier invention is inventive then the present patent systmens allows for the filing of a genuine application having its own date of filing. 8) In the opinion of your Group, would it be justified to limit the access to filing divisional, continuation or continuation in part applications primarily with the object of limiting the backlog of patent granting authorities? N/A 9) In the opinion of your Group, would it be desirable, in the interest of legal certainty of third parties, if databases of patent granting authorities ensured that a clear link was always indicated between original patent applications and all divisional, continuation or continuation in part applications derived therefrom? 49) It goes without saying that such transparency it favoured by the Dutch Group National and Regional Groups are invited to make any additional comment concerning divisional, continuation and continuation in part applications which they find relevant. 13