Designated survivor (J 0012/18)

Designated survivor (J 0012/18)

In a decision handed down in May of last year, the Legal Board of Appeal confirmed that a designated state previously forfeited in a parent European patent application at the time of filing a divisional cannot be revived in the divisional application. 
This confirmatory decision is a result of the applicant appealing the EPO Receiving Section’s decision to refuse the applicant’s request to designate France, Italy and Sweden in a divisional application where those states had been withdrawn in the parent application, before filing the divisional. 
The applicant accepted that all of the states designated in the parent application are designated in the divisional (Art 76(2) EPC) but argued that this did not limit the applicant’s option to explicitly designate further states.
The Appeal Board disagreed, stating the fact that the application is “a divisional application, … thereby benefitting from the parent’s date of filing and priority rights, implies that the divisional cannot be broader than the parent application, neither its subject-matter (Article 76(1) EPC) nor its geographical cover.
The Board concluded by referring to Art 79(3), which allows for the withdrawal of contracting states at any time up to the grant of a European patent, but which does not contain provisions for the addition of contracting states, and therefore dismissed the appeal.

Practice points

  • Ensure that designated states are not withdrawn before filing divisional applications if you intend to seek protection from the divisional in the withdrawn states.

  • In an analogous scenario, a Hong Kong patent only becomes independent of the UK application on which it is based after the grant of the UK patent has been registered in Hong Kong. If you intend to replace the protection offered by a UK patent with that offered by the UK designation of a European patent (or vice versa), be mindful that any protection in Hong Kong could be lost unless the grant of the UK patent has first been registered. Check carefully which UK application has been used as the basis for the Hong Kong case before withdrawing in the UK/EP(UK).

​Please contact Josh, Tim or your usual Kilburn & Strode advisor if you have any questions.

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