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Designation of Contracting States in a divisional application
In the case concerning the decision of the Board of Appeal J 0012/18 of 19.05.2020, the applicant and appellant contested the decision of the receiving agency which rejected the request to include the designation of Sweden, Italy and France as validly designated states for the application.
The proceedings concerned a divisional application derived from a previous application (parent application). In the previous application, the applicant withdrew the designation of Sweden, Italy and France before filing the divisional application.
The Board of Appeal of the European Patent Office had to decide which countries could be designated in the divisional application.
According to Article 76 (2) EPC, all the Contracting States designated in the previous application at the time of filing a European divisional application are deemed to be designated in the divisional application.
The appellant wanted the wording of Article 76(2) EPC to be understood as merely restricting the legal fiction that all the Contracting States designated in the earlier application at the time of filing a European divisional application are designated in the divisional application without limiting the applicant's ability to explicitly designate further states in the divisional application.
However, the Board of Appeal concluded that this assumption of the appellant was based on an arbitrary interpretation of the wording of Article 76(2) EPC.
According to the Board of Appeal, the wording of Article 76(2) EPC requires a different interpretation, which would limit the designation of states not only in terms of legal fiction, but generally to the states designated in the parent application at the time of filing the appeal. The fact that the application is referred to as a "divisional application" implies by definition that it is separate from the earlier application and therefore cannot be broader at the time of filing than the earlier application from which it is derived. Only after the divisional application has been filed will its fate be separated from amendments affecting the earlier application. Therefore, it is only after the filing of the divisional application that the withdrawal of designated states for the previous application would no longer have any influence on the procedure concerning the divisional application.
According to Article 76 (2) EPC, only those Contracting States may be designated in the divisional application which were designated in the previous application at the time of filing the divisional application.
A designation state which has been forfeited at the time of filing of the divisional application in the parent application cannot be revoked in the divisional application.