In J 5/08 the Legal Board had to decide whether the parent application was pending at the date of filing of the divisional application which took place after the appeal in the parent application had been filed but before the interlocutory revision decision by which the examining division revised the appealed decision (decision to grant referring to uncorrected text of claim 1). This revision decision was restricted to the correction of the decision to grant without any exhaustive statement in respect of the patentability of the subject matter. According to the Legal Board, a revision decision pursuant to Art. 109 EPC 1973 as such opened up the possibility that the patentability of the claimed subject matter would be completely re-assessed. In the case at issue, the grant proceedings which had been terminated by the revision decision were still pending up to that date of the revision decision. The Legal Board concluded that in general where a decision is taken on the allowability of an appeal, an application was pending within the meaning of R. 25 EPC 1973 (now R. 36(1) EPC) at least up to the point in time when the decision was taken.

The Legal Board in J 5/08 noted that there appeared to be diverging case law on the question of whether the suspensive effect of an appeal always had the consequence that the grant proceedings remained pending within the meaning of R. 25 EPC 1973 (R. 36(1) EPC) during the appeal proceedings. One line of decisions appeared to say that this was indeed the case (J 28/94 date: 1994-12-07, OJ 1995, 742 and J 3/04). However, a different view was taken in J 28/03, where the Legal Board had decided that the grant proceedings were to be considered as not having been pending during the appeal proceedings if the appeal was dismissed as inadmissible; the status of a divisional application filed while an appeal against the decision to grant a patent on the parent application was pending depended on the outcome of that appeal.

In J 23/13 the applicant had filed the divisional application after the filing of the notice of appeal against the decision refusing the parent application, but before the time limit for filing the statement of grounds of appeal had expired; since no statement of grounds was filed, the board rejected the appeal against the refusal of the parent application as inadmissible. The board in J 23/13 observed that the divisional application had been filed while the time limit for filing the grounds of appeal was still running. The fact that the appeal was later rejected as inadmissible could not change the fact that, on the date when the divisional was filed, substantive rights were still in existence (G 1/09, OJ 2011, 336).

In J 22/13 the applicant had filed the divisional application, in contrast to the situation in J 23/13, after expiry of the time limit for filing the statement of grounds of appeal. The application could thus not be treated as a divisional application.