I was just reading through G01/05 (as you do) and thought I’d highlight the following example:
An application is filed with an independent claim to having an element A, and dependent claims to the combinations A+B and A+C. The application as filed also discloses the combination A+B+Z, but not the combination A+C+Z. The search produces a citation which takes away the novelty of the claim to element A by itself. The applicant files a divisional application. In case I, the amended parent application claims combinations A+B and A+B+Z, and the divisional application claims combinations A+C and A+C+Z. In case II, the amended parent application claims A+C and A+C+Z, while the divisional application claims A+B and A+B+Z.
The applications are otherwise identical. The only objection made in either case is that the dependent claim to A+C+Z extends beyond the subject-matter of the parent application as filed. The applicant has to admit that on careful reading only the combination A+B+Z but not that of A+C+Z was originally disclosed.
If this was an objection under Article 123(2) EPC in the parent application in case II, the applicant can cure the objection by deleting the offending claim to A+C+Z. The wording “may not be amended” in Article 123(2) EPC has never been interpreted as indicating that the first putting forward of such an amendment is a contravention leading to automatic rejection of the application. Rather the applicant has to be notified of the objectionable matter and afforded an opportunity to amend in an allowable manner.
If however the objection in case I that the combination A+C+Z was not originally disclosed in the earlier application is raised under Article 76(1) EPC to the divisional application, then unless the applicant is permitted to amend to remove the claim to A+C+Z the result is both arbitrary and unfair. In case I he would lose the divisional application and with it his claim to A+C. In case II, he would keep the parent application and the divisional application, and have claims both to A+B and A+C. The needs of legal security for third parties would obviously be adequately served by allowing the deletion of the offending claim to A+C+Z in case I. To reject the divisional application in its entirety is in the Board’s view disproportionate.
May be useful to those revising for the EQEs and those considering divisional applications.