Belgium Belgique Belgien Report Q193 in the name of the Belgian Group by Nele D HALLEWEYN Divisional, Continuation and Continuation in Part Patent Applications Preliminary comments The answers to Q193 have been limited to divisional applications of Belgian national patents. The uncertainty about the conditions for filing European divisional applications (see the questions referred to the enlarged Board of Appeal: G1/05, G1/06 and G3/06) has not been discussed. The answers below are based on the following articles of the Belgian law: Article 18 of the Patent Act Articles 18, 19, 22 of the Royal Decree of 1986 Article 7 of the Law of 8 7 1977 Questions I) Analysis of the current law 1) Are divisional, continuation or continuation in part applications, respectively, available under your national or regional law? The Belgian patent act offers the applicant the possibility to file a divisional application of his original Belgian national application. Continuation and continuation in part applications are not provided for. 2) What is the justification behind allowing the filing of divisional, continuation and continuation in part applications in your law? According to the Belgian law a patent may only relate to one invention. The justification behind allowing the filing of divisional applications seems to be that an applicant should be given the opportunity to file a divisional application when the application contains more than one invention. 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? A divisional application may only be filed for subject matter covered by the content of the original application as filed. The conditions applying for the original patent application obviously also apply for any divisional applications. Further, if it is necessary to describe in an application subject matter for which protection is requested in another application, this subject matter must be disclosed in this application. 1
Note however that for a short term patent (duration of 6 years) a novelty search is not required. In the event of lack of unity of such a short term patent, this will not be observed by any authority, and may result in the grant of a non unitary patent. In this regard it is further observed that lack of unity is not a ground for nullity of a Belgian patent. 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? It is possible to file cascades of divisional applications, as long as the conditions given above (question 3) are fulfilled. However, the outcome of the pending Board of Appeal cases before the European Patent Office (G1/05, G6/03), might impose more conditions on cascades of divisional applications of a European patent application. In view of the similarities between the Belgian law and the European Patent Convention concerning divisional applications, it is believed that this could also have consequences for cascades of Belgian national patents. 5) At what time during the prosecution of the parent application may divisional, continuation or continuation in part applications be filed? The applicant may on his own initiative file a divisional application until the date of grant of the patent or until the date of notification of the search report if a search report is requested. If a search report is requested and it is established that the patent application does not fulfill the requirements of unity, then the applicant is requested to divide his application within a term of four months from the date of notification of the search report. 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? In practice the original application will usually be pending when filing a divisional application. If a divisional application is filed on the initiative of the applicant and there are no unity objections, this will always be the case. However, when the search report establishes non unity, it is in theory possible to file immediately after receipt of the search report an amended set of claims and request accelerated grant of the original application. In that way it might be possible that the original application is granted before the end of the four month term for filing a divisional application (see also question 4). 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? No, see also question 6. 8) Are there any restrictions as to what may be included in a divisional, continuation or continuation in part application? Yes, a divisional application may only be filed for subject matter covered by the content of the original application as filed. 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? 2
A divisional application may not contain new subject matter not covered by the content of the original application. In other words the subject matter contained in the description and claimed in the claims of a divisional application must be contained in the description and/or claimed in the claims of the original application. The Belgian patent law does not contain any further requirements. However, see my comment regarding question 4. 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? No, a divisional application is valid for 20 years or 6 years (if no novelty search is requested) starting from the filing date 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? The law does not prohibit double patenting by a Belgian original application and a Belgian divisional application. However, a divisional application only seems to be justified in case of an application containing more than one invention. Also, in view of the rule below for a European patent protecting the same as a Belgian patent, it is questionable whether the legislator wanted to allow double patenting by two Belgian national patents. Insofar a Belgian patent concerns an invention for which a European patent is granted to the same inventor or to his assignee, with the same application date or priority date, the Belgian patent has no further legal effect insofar it protects the same invention as the European patent from the date on which: the term for filing opposition expires, if no notice of opposition has been filed; the opposition procedure is finished, if opposition is instituted. 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? No, since the law makes no distinction in this case. 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? Allowing the filing of divisional applications offers the applicant the possibility to protect at a later stage certain aspects of the invention described in the original application but not necessarily claimed. This may be useful if it is not clear at the time of filing which aspects of the invention are most important, for example. Also, in case the search report establishes non unity of invention, the applicant is given the opportunity to file a divisional application for the second invention claimed in the parent application (and for the following inventions in the event of more than two inventions). 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? 3
The disadvantages are the legal uncertainty for third parties. However this uncertainty is limited in time see question 5 bearing in mind that a Belgian patent is granted without substantial examination. In this regard, it would be desirable to have a uniform time limit to file divisional applications. 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? Yes, as long as there is a time limit known to third parties so that a fair balance is provided between an applicant and third parties. 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? It would be desirable to have rules harmonized with the rules in place in Europe. 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? No. 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? This question does not apply for Belgian national patents since there is no examination procedure. 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? No. 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? This problem does not arise for Belgian national patents since patents are automatically granted without substantial examination. 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? Yes. National and Regional Groups are invited to make any additional comment concerning divisional, continuation and continuation in part applications which they find relevant. 4
Summary Divisional applications are available under the Belgian national law. Continuation and continuation in part applications are not provided for. Until the date of notification of the search report or until the date of grant if no search report is requested, the applicant may file divisional applications on his own initiative. Further, if a search report establishes that the application does not fulfill the requirements of unity of invention, the applicant is invited to file a divisional within four months from notification of the search report. Résumé Les demandes divisionnaires sont autorisées selon la loi nationale belge. Les demandes sous forme de Continuation and Continuation in Part Applications ne sont pas prévues. Jusqu à la date de notification du rapport de recherche ou jusqu à la date de délivrance du brevet, si un rapport de recherche n est pas demandé, le demandeur peut, de sa propre initiative, procéder au dépôt de demandes divisionnaires. Si le rapport de recherche établit que la demande ne satisfait pas aux dispositions d unité d invention, le demandeur est invité à déposer une demande divisionnaire dans un délai de quatre mois à partir de la date de notification du rapport de recherche. 5