In the EP patent application 01102231.6 the question arose whether or not for an application that has been refused in oral proceedings a divisional application can still be filed until the lapse of the two-months time limit for filing a notice of appeal according to Art. 108 EPC.
I think that a fair understanding of the basic principles of procedural law should lead to the conclusion that any legal case is pending until a final decision enters into effect - i.e. until no remedies are given any more. Quite to the contrary, the Examination Division took the position that upon refusal of the application its pendency ended and no division could be filed after that point in time. However, as already sketched by the IPKat, this understanding would lead to the strange situation that "if an appeal is then filed against the decision the application miraculously becomes pending again" such that "an application could be considered to have been pending only in retrospect.
The Enlarged Board of Appeal had to decide this issue in case G 1/09, after the following question has been referred to the Board in decision J 2/08:
Is an application which has been refused by a decision of the Examining Division thereafter still pending within the meaning of Rule 25 EPC 1973 (Rule 36(1) EPC) until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed?
Quite naturally, the Enlarged Board's decision referred to the above-referenced basic principles of procedural law and found the concept that it is “accepted that the final (res iudicata) character of a first-instance decision (Rechtskraft) will only ensue upon expiry of the time limit for filing an appeal” indeed well-established in the Contracting States - e.g. in the Code of Civil Procedure of Germany (§ 705, Zivilprozessordnung) and of France (Article 500, Code de Procédure Civile) - which in essence provides that decisions do not become final until the expiry of the respective period for seeking ordinary means of legal redress, such that there is no reason to deviate from this generally accepted principle in the context of Art. 67(4) EPC 1973 (cf. § 4.2.2 of G 1/09).
Consequently, the Enlarged Board of Appeals ruled that
In the case where no appeal is filed, a European patent application which has been refused by a decision of the ED is thereafter pending within the meaning of Rule 25 EPC 1973 (Rule 36(1) EPC) until the expiry of the time limit for filing a notice of appeal.In contrary to the situation of an appealable refusal of an application, in the case of a grant the pending status of the application normally ceases on the day before the publication of the grant, which, according to an obiter dictum (cf. § 4.3 of G 1/09), follows from the fact that from the date of publication of the grant the substantive rights are no longer derived from the application but from the patent.
For further coverage please refer to Oliver Randl's great K's Law blog and the EPLAW blog.